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 .
Status of Claims
Claims 1-6, 8, 11-15, 19 and 20 are pending and subject to examination in this Office action. Claims 7, 9, 10 and 16-18 have been canceled.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as unpatentable over Moses (U.S. Patent No. 11,572,689), in view of Berry (U.S. Patent Application Publication No. 2024/0098395).
Regarding independent claim 1, Moses describes an end cap device comprising:
a body (i.e., sleeve 10) shaped to fit around an end of a decking board (12; col. 2, ll. 22-25), the body comprised of a side wall (Figs. 1-6; col. 2, ll. 41-62).
Moses does not appear to expressly describe providing at least one of an image, symbol or logo indicia. As evidenced by Berry, it was old and well-known in the end cap art to provide at least one of an image, symbol or logo indicia (21) on an end cap (¶ [0026]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize an image, symbol or logo indicia on an end cap with a reasonable expectation of success because it would have provided desired manufacturer or advertising information as taught by Berry. Such combination of known prior art elements that merely yields predictable results would have been obvious to one skilled in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16.
Additionally, Applicant is reminded that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004)(Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed.) See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)(“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability…[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.”).
Accordingly, Moses as modified by Berry results in the claimed invention.
Regarding claim 2, further comprised of a fastener (Moses col. 3, ll. 6-14).
Regarding claim 3, wherein the fastener is positioned in the region of a bottom surface of a top wall of the body (Moses col. 3, ll. 6-14).
Regarding claim 4, wherein the fastener is comprised of an adhesive fastener (Moses col. 3, ll. 6-14).
Regarding claim 5, wherein the fastener is positioned on an interior surface of the side wall (Moses col. 3, ll. 6-14).
Regarding claim 6, wherein the fastener is comprised of an adhesive fastener (Moses col. 3, ll. 6-14).
Regarding claim 8, wherein the body is comprised of a rectangular shape (Moses Figs. 1-6).
Claims 1-6, 8, 11-15, 19 and 20 are rejected under 35 U.S.C. 103 as unpatentable over Kain (U.S. Patent Application Publication No. 2004/0088934), in view of Butterfield (U.S. Patent No. 4,718,213) and Berry (U.S. Patent Application Publication No. 2024/0098395).
Regarding independent claims 1, 11 and 19, and dependent claims 2 and 20, Kain describes an end cap device/method comprising:
a body (40) shaped to fit around an end (13) of a decking board (11; Fig. 3), the body comprised of:
a side wall (48);
a top wall (46); and
a fastener (49).
Kain does not appear to expressly describe that the body comprises hardwood or composite wood. As evidenced by Butterfield, it was old and well-known in the end cap art to utilize hardwood or composite wood material (i.e., wood veneer) on the body of such devices to improve the aesthetic appearance thereof (Fig. 5; col. 3, ll. 17-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize hardwood or composite wood material on the body with a reasonable expectation of success because it would have improved the aesthetic appearance thereof. Such combination of known prior art elements that merely yields predictable results would have been obvious to one skilled in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16.
Kain does not appear to expressly describe providing at least one of an image, symbol or logo indicia. As evidenced by Berry, it was old and well-known in the end cap art to provide at least one of an image, symbol or logo indicia (21) on an end cap (¶ [0026]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize an image, symbol or logo indicia on an end cap with a reasonable expectation of success because it would have provided desired manufacturer or advertising information as taught by Berry. Such combination of known prior art elements that merely yields predictable results would have been obvious to one skilled in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16. Additionally, Applicant is reminded that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004)(Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed.) See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)(“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability…[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.”).
Accordingly, Kain as modified by Butterfield and Berry results in the claimed invention.
Regarding claims 3 and 12, wherein the fastener is positioned in the region of a bottom surface of a top wall of the body (Kain Figs. 3, 6 and 7).
Regarding claims 4 and 13, wherein the fastener is comprised of an adhesive fastener (Kain 61; ¶ [0036]).
Regarding claims 5 and 14, wherein the fastener is positioned on an interior surface of the side wall (Kain Figs. 3, 6 and 7).
Regarding claims 6 and 15, wherein the fastener is comprised of an adhesive fastener (Kain 61; ¶ [0036]).
Regarding claim 8, wherein the body is comprised of a rectangular shape (Kain Fig. 3).
Response to Arguments
Applicant’s arguments submitted on 20 May 2026 have been fully considered, but they are moot in view of the new grounds of rejection presented above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Refer to the attached Form PTO-892.
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.
Authorization for Email Communication – In the event Applicant wishes to communicate with the Examiner via electronic mail, written authorization should be provided in Applicant’s next response. See MPEP § 502.03. The following is a sample authorization form which may be used by Applicant:
Recognizing that Internet communications are not secure, we hereby authorize the USPTO to communicate with any authorized representative concerning any subject matter of this application by electronic mail. We understand that a copy of these communications will be made of record in the application file.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY MINTZ whose telephone number is (571)270-7327. The examiner can normally be reached on M-Th 0730 - 1630 EDT.
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/RODNEY MINTZ/Primary Examiner, Art Unit 3635
