DETAILED ACTION
This Office action follows the Restriction Requirement filed on 5/13/2026 and is responsive to applicant’s reply filed on 7/8/2026. Currently, claims 2-43 are pending. Claims 1 and 44-64 have been cancelled.
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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, including claims 2-43 in the reply filed on 7/8/2026 is acknowledged.
Claims 1 and 44-64 are cancelled. No claims are withdrawn. No new claims have been added.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of the following informalities:
The abstract recites, “is disclosed” (line 1). This objection can be overcome by deleting “is disclosed”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Drawings
The drawings are objected to because of the following informalities:
Figs. 16C-16D are objected to because the figures each lack a proper title. The figures recite, “16C” and “16D”. This objection can be overcome by amending the drawings to recite, “FIG. 16C” and “FIG. 16D”, respectively.
Figs. 16C-16D each lack a reference character. Applicant is requested to submit a replacement drawing sheet that has at least one reference character in each of the drawings. The reference characters should be described in the specification. MPEP 608.02.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 lock mechanism in claims 2 and 28.
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.
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.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-18, and 27-36 of copending Application No. 18/236,353 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application and the claims of the reference application are drawn to substantially the same invention, with minor differences in wording or phraseology, and thus the claims of the reference application encompass the scope of or render obvious the claims of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 3-22 and 24-43 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 3-22 and 24-43, “The apparatus” is indefinite because the limitation lacks antecedent basis. This rejection can be overcome by amending the claims to refer to the previously recited roof attachment apparatus in independent claims 1 and 23 by reciting, “The roof attachment apparatus”.
Claim 3, “the base apertures” is indefinite because the claim previously recites one or more base apertures. This rejection can be overcome by providing antecedent basis for the one or more base apertures by reciting, “the one or more base apertures”. See also claims 5-6, 8-9, 24, 26-27 and 29-30.
Claim 7, “the move” is indefinite because the limitation lacks antecedent basis. Does applicant intend for the limitation to refer to the previously recited movement of the base of claim 1 or the moving of the base of claim 6? See also claim 28.
Claim 9, “the support structures” is indefinite because the limitation lacks antecedent basis. Note that the claims previously require one or more corresponding support structures. This rejection can be overcome by providing antecedent basis for the one or more support structures by reciting, “the one or more corresponding support structures”. See also claims 5-6, 8-9, 24, 26-27 and 29-30.
Claim 18, “the upright flanges” is indefinite because the limitation lacks antecedent basis. Note that the claims previously require one or more upright flanges. This rejection can be overcome by providing antecedent basis for the one or more upright flanges by reciting, “the one or more upright flanges”. See also claims 19, 21, 39-40 and 42.
Claim 19, “the fastener that is between 0.375 inch and 0.5 inch” is indefinite because the limitation lacks antecedent basis. Note that the claim does not previously require a fastener that is between 0.375 inch and 0.5 inch. Further note that the claims do not positively recite the fastener. This rejection can be overcome by previously in the claim reciting a fastener and defining the fastener as having a width of between 0.375 inch and 0.5 inch. See also claim 40.
The remaining claims in this section are rejected by virtue of dependency upon a rejected base claim.
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) 2 and 23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meine et al. (US 20200340519).
Claim 2, Meine provides a roof attachment apparatus comprising:
a base 712; (Figs. 9A-9C);
a protective cover 491 that includes one or more cover apertures (apertures in 491 shown in Figs. 9A-9C), wherein a sealant 92 is disposed in a space between the base and the protective cover (space 440’) while in a first state (first state before the base is secured to the protective cover; [0183]; Figs. 9A-9C); and
a lock mechanism (under the broadest reasonable interpretation, elements 436’ on wall 435’ of base 491 cooperate with elements 734 to lock and thus constitute a lock mechanism, as exceedingly broadly claimed; unlabeled in Figs. 9A-9C, but see identical element 491 shown in Fig. 6A; [0180]) that maintains the first state by preventing the base from moving towards the protective cover (it is understood that the lock mechanism maintains the first state by preventing the base from moving towards the protective cover; [0180] ; Figs. 9A-9C), wherein the lock mechanism is adjustable to allow movement of the base toward the protective cover (it is understood that the lock mechanism is adjustable to allow movement, for example by rotation of the base relative to the protective cover; [0180] ; Figs. 9A-9C) and into a second state, and wherein the movement of the base pushes the sealant through the cover apertures (it is understood that the movement of the base pushes the sealant through the cover apertures; see installed position shown in Fig. 9C).
Claim 23, Meine provides a roof attachment apparatus comprising:
a base 712; (Figs. 9A-9C);
a protective cover 491 that includes one or more cover apertures (apertures in 491 shown in Figs. 9A-9C), wherein the protective cover prevents the base from moving towards the protective cover while in a first state (the respective threads on 712 and 491 prevent the cover from simply being pushed toward the protective cover while in a first state, as exceedingly broadly claimed; Fig. 9A); and
a sealant 92 disposed between the base and the protective cover (space 440’), wherein the protective cover allows movement of the base toward the protective cover while in a second state (during threading of 712 with respect to 491), and wherein the movement of the base toward the protective cover pushes the sealant through the cover apertures (it is understood that the movement of the base pushes the sealant through the cover apertures; see installed position shown in Fig. 9C).
Claim(s) 2-3, 8-9, 13-14, 16-18, 20-21, 23-24, 29-30, 34-35, 37-39 and 41-42 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Almy et al. (US 20160248367) (‘Almy’).
Claim 2, Meine provides a roof attachment apparatus comprising:
a base (70 or alternatively 70 and 40’’);
a protective cover 80 that includes one or more cover apertures (one or more cover apertures shown in Figs. 20A-20B), wherein a sealant (flowable sealant 1; [0067]) is disposed in a space between the base and the protective cover while in a first state ([0067]-[0068]; Figs. 20A-20B); and
a lock mechanism (see tabs 84 on 80 shown in Figs. 20A-20B) that maintains the first state by preventing the base from moving towards the protective cover (it is understood that the lock mechanism maintains the first state by preventing the base 70 from moving toward the protective cover 80), wherein the lock mechanism is adjustable to allow movement of the base toward the protective cover and into a second state (it is understood that the lock mechanism is adjustable to allow movement of the base toward the protective cover and into a second state; “snap-fit type features that resiliently snaps” [0067]; Figs. 20A-20B), and wherein the movement of the base pushes the sealant through the cover apertures (movement of the base 70 pushes the sealant 1 through the cover apertures; “so that a flow of sealant from the collapsible reservoir is released through sealant flow path 81” [0067]; Figs. 20A-20B).
Claim 3, Almy further provides wherein the base includes a top surface (top surface of 70 or alternatively 40’’; Figs. 19A-19C and 21A-22B) and one or more base apertures in the top surface (one or more apertures in the base in the top surface; Figs. 19A-19C and 21A-22B), the base apertures configured to receive a fastener (the one or more base apertures is suitable to receive a fastener; Figs. 19A-19C and 21A-22B).
Claim 8, Almy further provides wherein the base includes one or more base apertures (one or more apertures in 70) configured to allow one or more corresponding support structures of the protective cover to pass through a surface of the base (under the broadest reasonable interpretation, element 15 constitutes a corresponding support structure of the protective cover that is suitable to pass through the one or more base apertures of the base; Fig. 21B).
Claim 9, Almy further provides wherein the support structures are not aligned to the base apertures while in the first state, and wherein the support structures cannot pass through the base apertures while in the first state (under the broadest reasonable interpretation, the support structures are not aligned to the base apertures while in the first state, as exceedingly broadly claimed because the support structures are not engaged with or in contact with the base apertures in the first state, as shown separated in Fig. 16, and thus the support structures cannot pass through the base apertures while in the first state, as it is only when the support structure is inserted to obtain the second state that the support structures contact the base apertures, as exceedingly broadly claimed; first state shown in Fig. 16; second state shown in Fig. 15).
Claim 13, Almy further provides wherein the sealant is disposed in a dome-like cross-sectional shape on an underside surface of the base (under the broadest reasonable interpretation, element 70 is dome-like in cross-sectional shape, and the sealant is disposed on an underside surface of the base; Figs. 15-16, 19A-19C and 21A-22B).
Claim 14, Almy further provides wherein the sealant is capable of filling in one or more gaps between asphalt shingles of an installation surface when pushed onto the installation surface (it is understood that the sealant is suitable for filling in one or more gaps between asphalt shingles of an installation surface when pushed onto the installation surface; note that the gaps and the asphalt shingles of an installation surface are not positively recited and thus not required; [0002]; [0054]).
Claim 16, Almy further provides wherein a surface of a perimeter wall of the protective cover is angled at a non-perpendicular angle from an underside surface of the protective cover (several surfaces of a perimeter wall of the protective cover are angled at a non-perpendicular angle from an underside surface of the protective cover; Figs. 20A-20B).
Claim 17, Almy further provides wherein the base includes a body portion (body portion of 70 or alternatively body portion of 40’’) and one or more upright flanges extending away from the body portion (see one or more flanges shown in Figs. 19A and 19C).
Claim 18, Almy further provides wherein at least one of the upright flanges has a fastener aperture configured to receive a fastener (inner 73 has a fastener aperture configured to receive a fastener; Figs. 19A and 19C).
Claim 20, Almy further provides wherein the fastener is configured to secure a rail to the base (under the broadest reasonable interpretation, the fastener is suitable to secure a rail shown in Fig. 15 to the base, as exceedingly broadly claimed).
Claim 21, Almy further provides wherein at least one of the upright flanges includes an edge that forms an obtuse angle with a surface of the base (see annotated Fig. 19A of Almy shown below in Examiner’s Notes; note that the two surfaces nonetheless form an obtuse angle, as exceedingly broadly claimed).
Claim 23, Almy provides a roof attachment apparatus comprising:
a base (70 or alternatively 70 and 40’’);
a protective cover 80 that includes one or more cover apertures (one or more cover apertures shown in Figs. 20A-20B), wherein the protective cover prevents the base from moving towards the protective cover while in a first state (it is understood that coupling features 84 are resilient and require plastic deformation to couple the base to the protective cover; [0067]; Figs. 15-22B); and
a sealant (flowable sealant 1; [0067]) disposed between the base and the protective cover ([0067]-[0068]; Figs. 20A-20B), wherein the protective cover allows movement of the base toward the protective cover while in a second state (it is understood that the protective cover permits movement of the base toward the protective cover while in a second state; [0067]; Figs. 15-22B), and wherein the movement of the base toward the protective cover pushes the sealant through the cover apertures (movement of the base 70 pushes the sealant 1 through the cover apertures; “so that a flow of sealant from the collapsible reservoir is released through sealant flow path 81” [0067]; Figs. 20A-20B).
Claim 24, Almy further provides wherein the base includes a top surface (top surface of 70 or alternatively 40’’; Figs. 19A-19C and 21A-22B) and one or more base apertures in the top surface (one or more apertures in the base in the top surface; Figs. 19A-19C and 21A-22B), the base apertures configured to receive a fastener (the one or more base apertures is suitable to receive a fastener; Figs. 19A-19C and 21A-22B).
Claim 29, Almy further provides wherein the base includes one or more base apertures (one or more apertures in 70) configured to allow one or more corresponding support structures of the protective cover to pass through a surface of the base (under the broadest reasonable interpretation, element 15 constitutes a corresponding support structure of the protective cover that is suitable to pass through the one or more base apertures of the base; Fig. 21B).
Claim 30, Almy further provides wherein the movement of the base includes linear or rotational movement from the first state to the second state (linear, as the base is pushed into engagement with the protective cover; [0067]; Figs. 15-22B), and wherein the movement aligns one or more of the support structures with one or more corresponding base apertures (the fastener is rotated and the base is moved linearly into engagement with the protective cover [0067]; Figs. 15-22B).
Claim 34, Almy further provides wherein the sealant is disposed in a dome-like cross-sectional shape on an underside surface of the base (under the broadest reasonable interpretation, element 70 is dome-like in cross-sectional shape, and the sealant is disposed on an underside surface of the base; Figs. 15-16, 19A-19C and 21A-22B).
Claim 35, Almy further provides wherein the sealant is capable of filling in one or more gaps between asphalt shingles of an installation surface when pushed onto the installation surface (it is understood that the sealant is suitable for filling in one or more gaps between asphalt shingles of an installation surface when pushed onto the installation surface; note that the gaps and the asphalt shingles of an installation surface are not positively recited and thus not required; [0002]; [0054]).
Claim 37, Almy further provides wherein a surface of a perimeter wall of the protective cover is angled at a non-perpendicular angle from an underside surface of the protective cover (several surfaces of a perimeter wall of the protective cover are angled at a non-perpendicular angle from an underside surface of the protective cover; Figs. 20A-20B).
Claim 38, Almy further provides wherein the base includes a body portion (body portion of 70 or alternatively body portion of 40’’) and one or more upright flanges extending away from the body portion (see one or more flanges shown in Figs. 19A and 19C).
Claim 39, Almy further provides wherein at least one of the upright flanges has a fastener aperture configured to receive a fastener (inner 73 has a fastener aperture configured to receive a fastener; Figs. 19A and 19C).
Claim 41, Almy further provides wherein the fastener is configured to secure a rail to the base (under the broadest reasonable interpretation, the fastener is suitable to secure a rail shown in Fig. 15 to the base, as exceedingly broadly claimed).
Claim 42, Almy further provides wherein at least one of the upright flanges includes an edge that forms an obtuse angle with a surface of the base (see annotated Fig. 19A of Almy shown below in Examiner’s Notes; note that the two surfaces nonetheless form an obtuse angle, as exceedingly broadly claimed).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4, 6, 11, 19, 25, 27, 32 and 40 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Almy et al. (US 20160248367) (‘Almy’).
Claim 4, Almy further teaches the fastener having a width (shown generically in Figs. 15-18 and 21A-22B). Almy is silent as to the width being between 0.375 inch and 0.5 inch. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to use a fastener that has a width between 0.375 inch and 0.5 inch, with the reasonable expectation of success of using fasteners that are readily available in known widths to fasten the apparatus, since fasteners having a width between 0.375 inch and 0.5 inch are known in the art, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Claim 6, Almy further teaches wherein installation of the fastener through a first one of the base apertures and into an installation surface causes the base to move through the protective cover, and wherein the movement of the base through the protective cover further pushes the sealant onto the installation surface (under the broadest reasonable interpretation, assembly of the apparatus requires the fastener to be installed through a first one of the base apertures and into an installation surface, which cause the base 70 to be pushed into, compressed and nonetheless through the protective cover, as exceedingly broadly claimed, which pushes the sealant 1 onto the installation surface; Figs. 15-22B).
Claim 11, Almy further teaches the sealant being selected to be used in below freezing temperatures [0047]. Almy does not specify a temperature of 0° C, but states that the selected sealant could be suitable to operate in colder climates with below freezing temperatures, which corresponds to 0° C, or the freezing point of water at standard atmospheric pressure. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to select a sealant that is capable of flowing through the one or more cover apertures at 0° C or one or more sub-freezing temperatures, with the reasonable expectation of installing, assembling or using the apparatus in a cold climate, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 19, Almy further teaches the upright flange having a thickness. Almy does not teach the thickness being less than a width of the fastener that is between 0.375 inch and 0.5 inch. Note that the fastener is not positively recited and thus not required. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the thickness of the upright flanges being less than a width of the fastener that is between 0.375 inch and 0.5 inch, with the reasonable expectation of success of accommodating known fasteners that are readily available in known widths to fasten the apparatus, since fasteners having a thickness being less than a width of the fastener that is between 0.375 inch and 0.5 inch are known in the art, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Claim 25, Almy further teaches the fastener having a width (shown generically in Figs. 15-18 and 21A-22B). Almy is silent as to the width being between 0.375 inch and 0.5 inch. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to use a fastener that has a width between 0.375 inch and 0.5 inch, with the reasonable expectation of success of using fasteners that are readily available in known widths to fasten the apparatus, since fasteners having a width between 0.375 inch and 0.5 inch are known in the art, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Claim 27, Almy further teaches wherein installation of the fastener through a first one of the base apertures and into an installation surface causes the base to move through the protective cover, and wherein the movement of the base through the protective cover further pushes the sealant onto the installation surface (under the broadest reasonable interpretation, assembly of the apparatus requires the fastener to be installed through a first one of the base apertures and into an installation surface, which cause the base 70 to be pushed into, compressed and nonetheless through the protective cover, as exceedingly broadly claimed, which pushes the sealant 1 onto the installation surface; Figs. 15-22B).
Claim 32, Almy further teaches the sealant being selected to be used in below freezing temperatures [0047]. Almy does not specify a temperature of 0° C, but states that the selected sealant could be suitable to operate in colder climates with below freezing temperatures, which corresponds to 0° C, or the freezing point of water at standard atmospheric pressure. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to select a sealant that is capable of flowing through the one or more cover apertures at 0° C or one or more sub-freezing temperatures, with the reasonable expectation of installing, assembling or using the apparatus in a cold climate, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 40, Almy further teaches the upright flange having a thickness. Almy does not teach the thickness being less than a width of the fastener that is between 0.375 inch and 0.5 inch. Note that the fastener is not positively recited and thus not required. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the thickness of the upright flanges being less than a width of the fastener that is between 0.375 inch and 0.5 inch, with the reasonable expectation of success of accommodating known fasteners that are readily available in known widths to fasten the apparatus, since fasteners having a thickness being less than a width of the fastener that is between 0.375 inch and 0.5 inch are known in the art, and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Claim(s) 5 and 26 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Almy et al. (US 20160248367) (‘Almy’) in view of Hilleke (US 20110094084).
Claim 5, Almy teaches all the limitations of claim 3 as above. Almy does not teach wherein the base apertures include a wall that is pierceable by the fastener when the fastener is received by the base apertures. However, Hilleke teaches a connecting device and method for creating a screw connection, comprising base apertures 8 including a wall 11 that is pierceable by a fastener 1 when the fastener is received by the base apertures (Fig. 2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the apparatus such that the base apertures include a wall that is pierceable by the fastener when the fastener is received by the base apertures, with the reasonable expectation of success of using a known fastening arrangement to secure the apparatus to the roof.
Claim 26, Almy teaches all the limitations of claim 24 as above. Almy does not teach wherein the base apertures include a wall that is pierceable by the fastener when the fastener is received by the base apertures. However, Hilleke teaches a connecting device and method for creating a screw connection, comprising base apertures 8 including a wall 11 that is pierceable by a fastener 1 when the fastener is received by the base apertures (Fig. 2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the apparatus such that the base apertures include a wall that is pierceable by the fastener when the fastener is received by the base apertures, with the reasonable expectation of success of using a known fastening arrangement to secure the apparatus to the roof.
Claim(s) 7 and 28 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Almy et al. (US 20160248367) (‘Almy ‘367’) in view of Almy (US 20160248369 (‘Almy ‘369’).
Claim 7, Almy ‘367 teaches all the limitations of claim 2 as above. Almy ‘367 further teaches wherein the lock mechanism includes one or more lock tabs 84. The lock tabs are suitable to engage flange 73, but Almy ‘367 is silent as to the tabs engaging lock apertures. Note that the lock apertures are not positively recited and thus not required. Almy ‘369 teaches lock tabs 114B that engage lock apertures 116B (Fig. 4). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the apparatus such that the lock tabs are configured to engage with one or more lock apertures while in the first state and to disengage from the lock apertures to allow the move into the second state, with the reasonable expectation of success of further securing the base to the protective cover in a known manner.
Claim 28, Almy ‘367 teaches all the limitations of claim 23 as above. Almy ‘367 further teaches a lock mechanism that includes one or more lock tabs 84. The lock tabs are suitable to engage flange 73, but Almy ‘367 is silent as to the tabs engaging lock apertures. Note that the lock apertures are not positively recited and thus not required. Almy ‘369 teaches lock tabs 114B that engage lock apertures 116B (Fig. 4). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the apparatus such that the lock tabs are configured to engage with one or more lock apertures while in the first state and to disengage from the lock apertures to allow the move into the second state, with the reasonable expectation of success of further securing the base to the protective cover in a known manner.
Claim(s) 10 and 31 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Almy et al. (US 20160248367) (‘Almy’) in view of Stephan (US 8931989).
Claim 10, Almy teaches all the limitations of claim 2 as above. Almy is silent as to the sealant being a butyl-based sealant. However, Stephan teaches a self sealing attachment assembly comprising an apparatus comprising a butyl-based sealant (col. 5, lines 20-25). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the sealant by using a butyl-based sealant, with the reasonable expectation of success of using a known, readily available material to create a seal, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 31, Almy teaches all the limitations of claim 23 as above. Almy is silent as to the sealant being a butyl-based sealant. However, Stephan teaches a self sealing attachment assembly comprising an apparatus comprising a butyl-based sealant (col. 5, lines 20-25). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the sealant by using a butyl-based sealant, with the reasonable expectation of success of using a known, readily available material to create a seal, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 12 and 33 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Almy et al. (US 20160248367) (‘Almy’) in view of Scott et al. (US 20090291238) (‘Scott’).
Claim 12, Almy teaches all the limitations of claim 2 as above. Almy is silent as to the sealant having a cure time that is greater than one year. Almy teaches the sealant being selected such that the apparatus can withstand temperature fluctuations [0047]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to select a sealant that has a cure time of greater than one year, with the reasonable expectation of permitting the sealant to remain flexible to withstand fluctuations in temperature, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
In the event that applicant disagrees that Almy implies use of such sealant, Scott teaches a sealant that has a cure time that is greater than one year [0132]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the sealant to have a cure time that is greater than one year, with the reasonable expectation of success of permitting the sealant to remain flexible to withstand temperature fluctuations, to resist shear stress, and to further prevent the seal from leaking.
Claim 33, Almy teaches all the limitations of claim 23 as above. Almy is silent as to the sealant having a cure time that is greater than one year. Almy teaches the sealant being selected such that the apparatus can withstand temperature fluctuations [0047]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to select a sealant that has a cure time of greater than one year, with the reasonable expectation of permitting the sealant to remain flexible to withstand fluctuations in temperature, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
In the event that applicant disagrees that Almy implies use of such sealant, Scott teaches a sealant that has a cure time that is greater than one year [0132]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the sealant to have a cure time that is greater than one year, with the reasonable expectation of success of permitting the sealant to remain flexible to withstand temperature fluctuations, to resist shear stress, and to further prevent the seal from leaking.
Claim(s) 15, 22, 36 and 43 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Almy et al. (US 20160248367) (‘Almy’) in view of Schaefer et al. (US 20130291479) (‘Schaefer’).
Claims 15 and 22, Almy teaches all the limitations of claim 2 as above. Almy is silent as to the protective cover being made from a polymer and the base being made from aluminum. However, Schaefer teaches an adjustable roof mounting system comprising an apparatus, wherein components of the apparatus can be made from a polymer or from aluminum [0106]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the protective cover from a polymer, and the base from aluminum, with the reasonable expectation of success of utilizing readily available, known materials to form the protective cover and base, respectively, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claims 36 and 43, Almy teaches all the limitations of claim 23 as above. Almy is silent as to the protective cover being made from a polymer and the base being made from aluminum. However, Schaefer teaches an adjustable roof mounting system comprising an apparatus, wherein components of the apparatus can be made from a polymer or from aluminum [0106]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the protective cover from a polymer, and the base from aluminum, with the reasonable expectation of success of utilizing readily available, known materials to form the protective cover and base, respectively, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Examiner’s Notes
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Annotated Fig. 21A of Almy et al. (US 20160248367) (‘Almy’)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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