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 .
Election/Restrictions
Applicant’s election without traverse of Species V, Figs. 1, 11, and 18-29 (window balance system 700 and shoe 704), and claims 2-10 and 12-21, in the reply filed on 12-30-2025 is acknowledged.
However, upon further consideration of paragraph [0107] of the specification of the instant application, the shoe 704 of Species V and the shoe 900 of Species VI differ only in the respective width 796 and 904 of the enlarged portion thereof. Per paragraph [0107], “The shoe 900 is substantially similar to the shoe 704 described above in FIGS. 27-29, and as such, similar features will not be described further. In this example, however, an enlarged portion 902 has a width 904 that is smaller than the width 796 of the shoe 704 (shown in FIG. 29). For example, the width 904 may be about 1 inch, while the width 796 may be about 1-1/4 inch. Accordingly, it should be appreciated that the enlarged portion 902 can be tailored so as to correspond to any window jamb size while still providing the benefits of the window balance system as described herein.” Thus, the structure of the shoes 704 and 900 is not deemed patentably distinct by the examiner. Consequently, non-elected Species VI – Figs. 1, 11, 18-26, and 30 (window balance system 700 and shoe 900) is being removed and combined with elected Species V such that elected Species V now includes Figs. 1, 11, and 18-30 (window balance system 700 with shoe 704/900).
In summary, this application contains claims directed to the following patentably distinct species:
Species I - Figs. 1-8 and 11 (window balance system 200);
Species II - Figs. 1 and 9-11 (window balance system 300);
Species III - Figs. 1 and 12-15 (window balance system 500 and shoe 514);
Species IV - Figs. 1, 12-14, 16, and 17 (window balance system 500 and shoe 600); and
Species V - Figs. 1, 11, and 18-30 (window balance system 700 and shoe 704/900).
Applicant’s election without traverse of Species V, Figs. 1, 11, and 18-30 (window balance system 700 and shoe 704/900), and claims 2-21, in the reply filed on 12-30-2025 is acknowledged. No claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species.
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, 3, 11, 12, 13, 16, 17, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 15, 15, 15, 14, 17, 16, 14, and 14, respectively, of U.S. Patent No. 11,560,743. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 2 of the instant application and clam 15 of the related patent each disclose a shoe (patent claim 13) comprising: an elongate portion (patent claim 14); an enlarged portion extending from the elongate portion such that the shoe is substantially T-shaped (patent claim 14); a channel connector (hook slot, patent claim 15); and a chamber for receiving a pivot bar (patent claim 13).
Claim 3 of the instant application reads on patent claim 15, i.e. hook slot.
Claims 11 and 12 of the instant application are obvious in view of patent claim 15 as a change in the size of a prior art device (e.g. width of enlarged portion) is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Claim 13 of the instant application and claim 14 of related patent each discloses a window balance system (patent claim 13) comprising: an elongated U-shaped channel including: a base wall and two side walls (plurality of walls, patent claim 13); and a receiver defining a pivot bar opening (patent claim 13); and a shoe configured to couple to the end of the elongated U-shaped channel proximate the receiver (patent claim 13), the shoe including: a body received at least partially within the elongated U-shaped channel proximate the receiver (elongate and enlarged portions, patent claim 14); and a chamber receiving a pivot bar (patent claim 13).
Claim 16 of the instant application reads on patent claim 17, i.e. notch.
Claim 17 of the instant application reads on patent claim 16, i.e. slots.
Claim 19 of the instant application reads on patent claim 14, i.e. elongate and enlarged portions defining a T-shape.
Claim 20 of the instant application is obvious in view of patent claim 14 as the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
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 2, 7, 10, 13, 19, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uken (US#2017/0211305).
Regarding claim 2, Uken discloses a shoe 210 for a “block and tackle” window balance system 600 (Fig. 3C, spring 626, pulleys 628, and cord 632) having a U- shaped channel 630 (Figs. 6), the shoe comprising: an elongate portion (vertical portion of 210 including labeled elements 211-213 as shown in Fig. 3A); an enlarged (wider) portion (horizontal portion of 210 including labeled elements 214,218,219 as shown in Fig. 3A) extending from the elongate portion (transverse to and at an end of the elongate portion) such that the shoe is substantially T-shaped (Fig. 3A); a channel connector (channel defined in the front of 211 above the enlarged portion in front view Fig. 3A) defined by a front of the elongate portion, wherein the front of the elongate portion is configured to face a base wall of the U-shaped channel (Figs. 6); and a chamber 219 defined at an intersection of the elongate portion and the enlarged portion at the front (Fig. 3A), wherein the chamber is sized and shaped to directly receive at least a portion of a head of a pivot bar 114 of a window sash 104/106 ([0044], Fig. 9).
Regarding claim 7, wherein the chamber does not extend all the way through the shoe (see rear view of shoe in Fig. 3B).
Regarding claim 10, wherein the enlarged portion includes two opposing end surfaces (end surfaces which receive ends 215 of element 214) and a bottom surface 218 (Fig. 3B) , the end surfaces (surfaces above element 214 in Fig. 3A and/or below element 215 in Fig. 3B) and the bottom surface (perimeter of 218) are at least partially curved surfaces.
Regarding claim 13, Uken discloses a window balance system 600 (Fig. 3C) comprising: an elongated U-shaped channel 630 (Figs. 6) including: a base wall 636 and two side walls; and a receiver “defined” at one end of the elongated U-shaped channel (portion of the U-shaped channel 630 at one end (lower end of Fig. 9) thereof), the receiver defining a pivot bar opening (space between side walls of U-shaped channel 630); and a shoe 210 configured to couple to the end of the elongated U-shaped channel proximate the receiver (Fig. 9), the shoe including: a T-shaped body (Fig. 3A) received at least partially within the elongated U-shaped channel proximate the receiver (Fig. 9); and a chamber 219 defined by the body, wherein the chamber cooperates with the pivot bar opening of the receiver to directly receive at least a portion of a head of a pivot bar 114 of a window sash 104/106 ([0044], Fig. 9).
Regarding claim 19, wherein the body of the shoe includes an elongate portion (vertical portion of 210 including labeled elements 211-213 as shown in Fig. 3A) received at least partially within the elongated U-shaped channel (Figs. 6) and an enlarged (wider) portion (horizontal portion of 210 including labeled elements 214,218,219 as shown in Fig. 3A) extending from the elongate portion such that the body of the shoe is substantially T-shaped (Fig. 3A).
Regarding claim 21, wherein the window balance system 600 (Fig. 3C) is being viewed and labeled as a “block and tackle” window balance system via its usage of the spring 626, pulleys 628, and cord 632.
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 11, 12, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Uken (US#2017/0211305).
Regarding claims 11 and 12, Uken fails to disclose the width of the enlarged portion, specifically a width of about one inch or about 1-1/4 inch. It is noted the applicant invites change to the width of the enlarged portion ([0107], “Accordingly, it should be appreciated that the enlarged portion 902 can be tailored so as to correspond to any window jamb size while still providing the benefits of the window balance system as described herein.”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Uken such that the width of the enlarged portion was about one inch or about 1-1/4 inch to optimize cooperation with a specific window jamb as a change in the size of a prior art device (e.g. width of enlarged portion) is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Regarding claim 20, although Uken explicitly recites a “rigid” U-shaped channel, Uken fails to disclose the specific materials of the shoe and U-shaped channel, and thus fails to disclose wherein the shoe is formed from a different material than the elongated U-shaped channel. It is noted the applicant invites change to the materials ([0108], “The materials utilized in the window balance systems described herein may be those typically utilized for window and window component manufacture. Material selection for most of the components may be based on the proposed use of the window.”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Uken such that the shoe is formed from a different material (e.g. less rigid) than the rigid U-shaped channel for optimal functional cooperation therewith as the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Allowable Subject Matter
Claims 4-6, 8, 9, 14, 15, and 18 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.
Upon filing of an approved terminal disclaimer to overcome the double patenting rejection, claims 3, 16, and 17 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, the channel connector of Uken applied to claim 2 above fails to comprise a hook defined as a slot within the elongate portion and configured to receive a rivet of the U-shaped channel.
Regarding claim 5, the elongate portion of Uken applied to claim 2 above fails to include a groove disposed adjacent the channel connector on the front, the groove shaped and sized to at least partially receive the base wall of the U-shaped channel.
Regarding claim 8, the enlarged portion of Uken applied to claim 2 above fails to include a pair of slots defined within with the elongate portion disposed in-between, the pair of slots configured to receive at least a portion of side walls of the U-shaped channel.
Regarding claims 14 and 15, the above defined “receiver” of Uken applied to claim 13 above, namely an end portion of the U-shaped channel 630, fails to include the claimed structure.
Regarding claims 16 and 18, the two side walls of the elongated U-shaped channel of Uken applied to claim 13 above fail to include the claimed structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM L MILLER whose telephone number is (571)272-7068. The examiner can normally be reached 9:30 - 6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM L. MILLER
Primary Examiner
Art Unit 3677
/WILLIAM L MILLER/Primary Examiner, Art Unit 3677
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