DETAILED ACTION
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 .
Information Disclosure Statement
The information disclosure statement filed 8/8/24 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because no date is cited for the NPL in box 1 on the IDS. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Objections
Claims 2 and 3 are objected to because of the following informalities: “the” has been omitted before “living hinge”. Appropriate correction is required.
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.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites the limitation "the cap flange" in line 1. There is insufficient antecedent basis for this limitation in the claim. Should it be “the gap flange”?
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.
Claims 1, 5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koenig, Jr., US 5,477,643.
Regarding claim 1:
Koenig discloses a longitudinally-extending casing bead (10) comprising:
a generally flat base side (26) having a first thickness;
an upwardly extending wall (20) having a second thickness, the upwardly-extending wall intersecting with the base side at a common edge; and
a gap portion including, a generally flat gap arm (also labeled 26) having a third thickness (the gap arm is essentially coplanar with the generally flat base side and of the same thickness), the gap arm extending outwardly of the upwardly extending wall proximate the common edge, and a living hinge (14), the living hinge extending longitudinally along a gap arm intersection with the upwardly extending wall proximate the common edge, the living hinge having a fourth thickness;
wherein the fourth thickness is substantially thinner than the third thickness (refer to Fig. 3, the living hinge is thinner for flexibility).
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Regarding claim 5:
Koenig discloses a gap flange (60), the gap flange intersecting with an outer edge of the gap arm and extending upwardly and generally parallel to the upwardly extending wall.
Regarding claim 7:
Koenig discloses wherein the casing bead is longitudinally extruded as a single piece. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process.
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.
Claims 1-3, 6, 8-13 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Harrison, US 8,171,685 in view of Amundson, US 11,193,668.
Regarding claim 1:
Harrison discloses a longitudinally-extending casing bead (500) comprising:
a generally flat base side (507-2) having a first thickness;
an upwardly extending wall (526-2) having a second thickness, the upwardly-extending wall intersecting with the base side at a common edge; and
a gap portion including, a generally flat gap arm (the arm 520) having a third thickness, the gap arm extending outwardly of the upwardly extending wall proximate the common edge, and a living hinge (547-2), the living hinge extending longitudinally along a gap arm intersection with the upwardly extending wall proximate the common edge, the living hinge having a fourth thickness.
Harrison discloses wherein the living hinge is a different material but does not expressly disclose a thinner thickness.
Amundson discloses a trim product wherein a living hinge is created by providing a thinner thickness (132).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill to substitute the thinner material living hinge as suggested by Amundson for the different material living hinge of Harrison in order to provide flexibility without requiring additional material, simplifying construction.
Regarding claims 2-3 and 17:
Harrison discloses wherein the gap arm extends outwardly from the living hinge at an angle of 45 degrees (col. 3, ll. 62) and further discloses wherein various transition angles may be used.
It would have been obvious to one having ordinary skill in the before the effective filing date of the invention, to contrive any number of desirable ranges for the gap arm angle limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, 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 1980). Refer to MPEP § 2144.05.
Regarding claim 6:
Harrison discloses wherein the casing bead is plastic (col. 3, ll. 23-26).
Regarding claims 8, 9 and 18:
Harrison discloses wherein the base side includes a plurality of weep holes and fasteners holes distributed thereon (508, refer to Fig. 5B).
Regarding claims 10-13:
Harrison modified in view of Amundson does not expressly disclose the first through fourth thicknesses or the exact width of the gap arm.
It would have been an obvious matter of design choice to provide the specific thicknesses and gap arm width, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). There would be no unexpected or unpredictable result obtained from providing the specified thicknesses or gap arm width. There is no evidence that the claimed dimensions not specifically taught by Harrison in view of Amundson provide a criticality that would be unachievable and unexpected with a reasonable amount of experimentation.
Regarding claim 15:
Harrison discloses a longitudinally-extending casing bead comprising:
a generally flat base side having a first thickness;
an upwardly extending wall having a second thickness, the upwardly-extending wall intersecting with the base side at a common edge; and
a gap portion including, a generally flat gap arm having a third thickness, the gap arm extending outwardly from the upwardly extending wall proximate the common edge at a gap arm angle of 45 degrees relative to the base side and a living hinge, the living hinge extending longitudinally along a gap arm intersection with the upwardly extending wall proximate the common longitudinally extending edge, the living hinge having a fourth thickness.
Harrison discloses wherein the living hinge is a different material but does not expressly disclose a thinner thickness.
Amundson discloses a trim product wherein a living hinge is created by providing a thinner thickness (132).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill to substitute the thinner material living hinge as suggested by Amundson for the different material living hinge of Harrison in order to provide flexibility without requiring additional material, simplifying construction.
Harrison modified in view of Amundson does not expressly disclose the exact width of the gap arm.
It would have been an obvious matter of design choice to provide the specific gap arm width, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). There would be no unexpected or unpredictable result obtained from providing the specified thicknesses or gap arm width. There is no evidence that the claimed dimensions not specifically taught by Harrison in view of Amundson provide a criticality that would be unachievable and unexpected with a reasonable amount of experimentation.
Regarding claim 16:
Harrison modified in view of Amundson does not expressly disclose the first through fourth thicknesses.
It would have been an obvious matter of design choice to provide the specific thicknesses, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). There would be no unexpected or unpredictable result obtained from providing the specified thicknesses. There is no evidence that the claimed dimensions not specifically taught by Harrison in view of Amundson provide a criticality that would be unachievable and unexpected with a reasonable amount of experimentation.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Harrison, US 8,171,685 in view of Amundson, US 11,193,668 as applied to claim 1, further in view of Maziarz, US 10,358,814.
Regarding claim 4:
Harrison does not expressly disclose a cap flange.
Maziarz discloses a control joint having a longitudinally-extending cap flange (141), the cap flange intersecting with an outer edge of the upwardly extending wall and extending inwardly and generally parallel to a base side.
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide a cap flange as suggested by Maziarz to the casing bead of Harrison to assist in containing plaster or stucco.
Allowable Subject Matter
Claims 14 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 20 is allowable.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 14 and 19, the most relevant prior art of record relied upon in the rejecting the claims above does not include a foam rod in the gap portion. A foam rod could not be added to the gap portions of the prior art without improper hindsight reasoning and compromising the functionality of the prior art products.
Regarding claim 20, while a building is implied by the prior art, the prior art does not further suggest wherein the casing beads of the most relevant prior art of record are used in conjunction with a window frame. It does not appear that the most relevant prior art devices to casing beads would be compatible with a window frame as claimed in claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT W HERRING whose telephone number is (571)270-3661. The examiner can normally be reached Monday-Thursday 7:30a-6:00p MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENT W HERRING/Primary Examiner, Art Unit 3633