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 1-9, 11-21 are pending.
Claim 10 is cancelled.
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 19-20 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.
Re claim 19, claim 19 recites, “a support arrangement” in lines 1-2 and “a soffit and/or a fascia of a building.” However, claim 19 depends on claim 1 which already introduces these features. Thus, it is unclear if these features of claim 19 are the same or different than that of claim 1. It appears this language is intended to recite, “the support arrangement” and “the soffit and/or the fascia of the building” and will be interpreted as such.
Re claim 20, claim 20 recites, “forming a supporting structure only by an attachment means.” The claim then proceeds to include features other than an attachment means. It is unclear how the supporting structure is formed “only by” an attachment means, yet include features such as a backing member. For the purposes of this examination, this language will be interpreted as, “forming a supporting structure by an attachment means.”
In addition, claim 20 recites, for example, “a supporting structure,” “an attachment means,” “a building,” etc. This is a non-exhaustive list. However, claim 20 depends on claim 1 which already introduces these features. Thus, it is unclear if these features of claim 19 are the same or different than that of claim 1. It appears this language refers to the same as that of claim 1 and will be interpreted as such.
Re claim 21, claim 21 recites, “the attachment means and the backing member are sufficient to support the covering elements on at least one of….without a further structural component for stabilizing and/or rigidifying the support arrangement.” Although supported in the specification as originally filed, it is not readily apparent how this is possible. The attachment means must be attached to the building to function with, for example fasteners. Fasteners would constitute structural components which stabilize or rigidify the support arrangement. Moreover, the figures depict structural components (20) which appear to also serve to stabilizing and/or rigidifying the support arrangement. Thus, it is unclear how the structure can function on a building “without a further structural component for stabilizing and/or rigidifying the support arrangement.” For the purposes of this examination, this language will be interpreted as excluding mechanical fasteners from the phrase, “without a further structural component for stabilizing and/or rigidifying the support arrangement.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-9, 11, 13-17 and 19-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Coyle (US 2020/0318354) (Further, as shown in Applicant’s Fig. 1-2 “Prior Art”).
Re claim 1, Coyle discloses a support arrangement (Fig. 5-6 101) for supporting covering elements ([0151]; 125) on a soffit ([0146]) and/or a fascia of a building ([0146]), the support arrangement (101) comprising a backing member (102, 103) for receiving covering elements ([0151]; 125) and an attachment means (110) extending longitudinally along the length (Fig. 6) of the backing member (102, 103) for attaching ([0146]) the support arrangement (101) to a building or a building component ([0146]) such that the support arrangement (Fig. 5-6 101) forms a part of the building ([0146]) and wherein no support gussets (Fig. 6; 108 being a “reinforcing flange” and not a gusset; and where a gusset is defined as a sheet of metal for connection between beams, girders and/or columns) are provided spaced apart along the length (Fig. 6) of the support arrangement (101).
Re claim 2, Coyle discloses a support arrangement as claimed in claim 1, wherein the support arrangement (101) does not comprise a plurality of separate vertical support gussets (Fig. 6; 108 being a “reinforcing flange” and not a gusset; and where a gusset is defined as a sheet of metal for connection between beams, girders and/or columns).
Re claim 3, Coyle discloses a support arrangement as claimed in claim 1, wherein in the support arrangement (101) there are no support gussets (Fig. 6; 108 being a “reinforcing flange” and not a gusset; and where a gusset is defined as a sheet of metal for connection between beams, girders and/or columns) extending from the attachment means (110) or the backing member (102, 103).
Re claim 4, Coyle discloses a support arrangement as claimed in claim 1, wherein in the support arrangement (101) there are no support gussets (Fig. 6; 108 being a “reinforcing flange” and not a gusset; and where a gusset is defined as a sheet of metal for connection between beams, girders and/or columns) attached/fixed to (Fig. 6) the attachment means (110) or the backing member (102, 103).
Re claim 5, Coyle discloses a support arrangement as claimed in claim 1, the backing member (102, 103) is supportable only by (Fig. 6) the attachment means (110).
Re claim 6, Coyle discloses a support arrangement as claimed in claim 1, wherein the backing member (102, 103) and covering elements (125) are fixed to (Fig. 6) the attachment means (110) in use (Fig. 5-6), and the attachment means (110) is engageable with fixings ([0150]) of a mount ([0150]) for mounting the support arrangement (101) on a building ([0150]).
Re claim 7, Coyle discloses a support arrangement as claimed in claim 1, wherein the attachment means (110) is operable to receive directly (Fig. 5-6) the backing member (102, 103).
Re claim 8, Coyle discloses a support arrangement as claimed in claim 1, wherein the attachment means (110) comprises an attachment channel (110) having a longitudinal development (Fig. 6) with a U-shaped cross section (Fig. 5), a base (115) and two mutually opposing sidewalls (116a) that extend perpendicularly from (Fig. 6) the base (115), and an opening (between 116a) that is defined between the opposing sidewalls (116a) and faces (Fig. 5) the base (115).
Re claim 9, Coyle discloses a support arrangement as claimed in claim 1, wherein the backing member (102, 103) comprises at least one backing board (102, 103) configured to span (Fig. 5) at least two covering elements (125) for connecting together the covering elements (125).
Re claim 11, Coyle discloses a support arrangement as claimed in claim 1, wherein attachment means (110) is fixed directly to (Fig. 5-6) the backing member (102, 103).
Re claim 13, Coyle discloses a support arrangement as claimed in claim 1, wherein the backing member (102, 103) is formed at least partially from cementitious and/or composite material ([0009]).
Re claim 14, Coyle discloses a support arrangement as claimed in claim 1, wherein the backing member (102, 103) comprises a first board portion (102) and a second board portion (103; [0146]; Fig. 5), wherein a first board portion (102) is a fascia-forming face (Fig. 5-6) while the second board portion (103; [0146]; Fig. 5) is a soffit-forming face (Fig. 5-6), or vice-versa (Fig. 5-6).
Re claim 15, Coyle discloses a support arrangement as claimed in claim 8, wherein the base (115) of the attachment channel (110) is fixed to a second board portion (102) or to a first board portion (103; [0146]; Fig. 5) of the backing member (102, 103).
Re claim 16, Coyle discloses a support arrangement as claimed in claim 8, wherein one of the sidewalls (116a) of the attachment channel (110) is fixed to (Fig. 5) a first board portion (102) or to a second board portion (103; [0146]; Fig. 5) of the backing member (102, 103).
Re claim 17, Coyle discloses a support arrangement as claimed in claim 8, wherein the base (115) and one sidewall (116a) of the attachment channel (110) are fixed to different portions (Fig. 5-6) of the backing member (102, 103).
Re claim 19 as best understood in view of the rejection under 35 USC 112 above, Coyle discloses a building assembly ([0146]) comprising covering elements ([0151]; 125) and a support arrangement (101) as claimed in claim 1 (see above) for supporting the covering elements ([0151]; 125) on a soffit ([0146]) and/or a fascia.
Re claim 20 as best understood in view of the rejection under 35 USC 112 above, Coyle discloses a method of constructing ([0120]) a support arrangement (101) as claimed in claim 1, the method comprising the steps of forming (Fig. 6 showing 110 formed) a supporting structure (110) that is made only by an attachment means (110) for attaching the support arrangement (101) to a building ([0146]) or a building component ([0146]) such that the support arrangement (101) forms a part of the building ([0146]) and a backing member (102, 103), the method comprising the step of providing (Fig. 6 showing 102/103 provided) the backing member (102, 103) and fixing (Fig. 6) the attachment means (110) directly to (Fig. 6) the backing member (102, 103), wherein the method does not comprise the step of connecting a plurality of supporting gussets (Fig. 6; 108 being a “reinforcing flange” and not a gusset; and where a gusset is defined as a sheet of metal for connection between beams, girders and/or columns) to form a supporting frame to which the backing member (102, 103) can be fixed (Fig. 6).
Claim(s) 21 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Munson (US 9,609,964).
Re claim 21 as best understood in view of the rejection under 35 USC 112 above, Munson discloses a support arrangement (Fig. 1-3) for supporting covering elements (16) on at least one of (i) a soffit and (ii) a fascia of a building (Fig. 1-3 is capable of ‘supporting’ 16 on at least one of (i) a soffit and (ii) a fascia of a building, as this is a statement of intended use, and as ‘support’ is extremely broad), the support arrangement (Fig. 1-3) comprising a backing member (18) for receiving covering elements (16) and an attachment means (12) extending longitudinally along the length (Fig. 1) of the backing member (18) for attaching (Fig. 3) the support arrangement (Fig. 1-3) to a building or a building component (10) such that the support arrangement (Fig. 1-3) forms a part of the building (on 10) and wherein the attachment means (12) and the backing member (18) are sufficient to support (Fig. 3) the covering elements (16) on at least one of (i) the soffit and (ii) the fascia of the building (12/18 are capable of ‘supporting’ 16 on at least one of (i) the soffit and (ii) the fascia of the building, as the language, “sufficient to support” is a statement of intended use, and as ‘support’ is extremely broad) without a further structural component (Fig. 2-3) for stabilising and/or rigidifying (Fig. 2-3) the support arrangement (Fig. 1-3).
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21 is/are rejected under 35 U.S.C. 102a2 as being anticipated by Sato (WO2022/265015).
Re claim 21 as best understood in view of the rejection under 35 USC 112 above, Sato discloses a support arrangement (Fig. 3, 100) for supporting covering elements (10) on at least one of (i) a soffit and (ii) a fascia of a building (Fig. 3 is capable of ‘supporting’ 10 on at least one of (i) a soffit and (ii) a fascia of a building, as this is a statement of intended use, and as ‘support’ is extremely broad), the support arrangement (100) comprising a backing member (21) for receiving covering elements (10) and an attachment means (22) extending longitudinally along the length (Fig. 2) of the backing member (21) for attaching (Fig. 4) the support arrangement (100) to a building or a building component (W) such that the support arrangement (100) forms a part of the building (on W) and wherein the attachment means (22) and the backing member (21) are sufficient to support (Fig. 4) the covering elements (10) on at least one of (i) the soffit and (ii) the fascia of the building (21/22 are capable of ‘supporting’ 10 on at least one of (i) the soffit and (ii) the fascia of the building, as the language, “sufficient to support” is a statement of intended use, and as ‘support’ is extremely broad) without a further structural component (Fig. 3) for stabilising and/or rigidifying (Fig. 3) the support arrangement (100).
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) 12, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coyle (US 2020/0318354) (Further, as shown in Applicant’s Fig. 1-2 “Prior Art”).
Re claim 12, Coyle discloses a support arrangement as claimed in claim 1, but fails to disclose wherein the backing member (102, 103) is a metal or metal alloy or steel backing member.
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 support arrangement of Coyle wherein the backing member is a metal or metal alloy or steel backing member in order to utilize a readily available, durable material. In addition, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 18, Coyle discloses a support arrangement as claimed in claim 1, wherein the attachment member(s) (110) extend longitudinally along the length (Fig. 6) of the backing member (102, 103) for attaching ([0146]) the support arrangement (101) to a building or a building component ([0146]), but fails to disclose wherein the attachment means comprises a plurality of attachment members generally spaced apart over a depth of the one or more backing members and/or generally spaced apart over a length of the backing member.
However, it would have been obvious one having ordinary skill in the art before the effective filing date of the claimed invention to modify the support arrangement of Coyle wherein the attachment means comprises a plurality of attachment members generally spaced apart over a depth of the one or more backing members and/or generally spaced apart over a length of the backing member in order to provide additional attachment locations, providing a stronger, more rigid connection to the building or building component. In addition, it has been held that the duplication of parts is considered within the level of ordinary skill in the art absent production of a new or unexpected result. In re Harza, 274 F.2d 669.
Response to Arguments
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 (for the reasons stated in the previous rejection) 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 that interpretation of 108 in Coyle as “not a support gusset” is not proper. Applicant states that Merriam-Webster defines “gusset” as “a plate or bracket for strengthening an angle in framework (as in a building or bridge.” Applicant states that this particular definition does not refer to beams girder or columns and that “clearly” 120 of Coyle fall within the category.” The Examiner respectfully disagrees.
First, Applicant appears to gloss over the contextual part of the definition provided. Merriam-Webster defines “gusset” as “a plate or bracket for strengthening an angle in framework” (emphases added). This definition plainly considers a gusset as a strengthening member “at an angle” in framework. Merriam-Webster, directly below this definite, provides a picture example of such a member (see below).
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Clearly, neither 120 nor 121 of Coyle can reasonably be considered to be a plate or bracket for strengthening an angle in framework. Each are mounted solely on a planar surface and do not in any way support any framework angle. In addition, “gusset” is a well-known term in the art that is utilized to define plates that support framework angles. A person of ordinary skill would not look at Fig. 6 of Coyle and conclude that 120 and /or 121 constitute gussets. 120 and 121 may be strengthening members. But gussets are a species of the genus of strengthening members. Just because 120 and 121 may serve to strengthen does not make them gussets.
Second, Applicant argues that the specification provides “gussets” as an example of a structural component for stabilizing, and argues that 120 would fall within this definition. The specification does not equate all stabilizing means to be gussets. It does not define gussets as all stabilizing means. The specification simply states that there are not stabilizing means, and in particular without support gussets. The specification readily comprehends that gussets are only one subset of stabilizing means, and the claim limits only to a portion of stabilizing means, those being gussets. It does not preclude all stabilizing means. This appears to be understood in view of the inclusion of new claim 21, which addressed this issue. The fact that the specification makes no mention of beams, columns, etc., is irrelevant. There is more than one definition of gusset which would satisfy the plain meaning of the term. In any event, even under Applicant’s own supplied definition, 120 would not satisfy the definition and is therefore not a “gusset.” Interpreting 120 to be a “gusset” is overly broad and is inconsistent with the plain meaning and interpretation of those with ordinary skill in the art.
Applicant’s arguments concerning the new claims and remaining depending claims are addressed by 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at (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
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