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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10753117. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim includes all of the limitations of the claim in this application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the plurality of longitudinally-extending sections are arranged telescopically” recited in Claim 33, the “second frame” recited in Claim 36 and the “kit” and “packaging” recited in Claim 40 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 36 and 40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 36 recites a “second frame” and that the canopy is coupleable with the second frame about the opposing trailing end which is not found in the specification nor depicted in the figures of this application or any of its parent applications. The second frame is considered new matter in this application.
Claim 40 recites a “kit comprising packaging” which is not found in the specification nor depicted in the figures of this application or any of its parent applications. The kit and packaging are considered new matter in this application.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21, 22, 26-29, and 35-39 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 101315166 (Kang).
Regarding Claim 21, Kang teaches a system for providing shade onto a surface, the system comprising: a frame (100) engageable with the surface (at 110/320); a canopy (200) extending between a suspension end (toward 210) and an opposing trailing end (toward 240), the suspension end of the canopy being coupleable (via 210) with the frame about a portion of the frame.
Regarding Claim 22, Kang teaches that the canopy is a unitary canopy (there is a single canopy) or comprises a plurality of sheets of material coupleable together.
Regarding Claim 26, Kang teaches that the canopy comprises one or more vent holes (240) defined within the canopy, one or more tails extending therefrom, one or more wind socks, or a combination thereof.
Regarding Claim 27, Kang teaches that the trailing end of the canopy is spaced apart from the portion of the frame such that when a wind force is applied to the canopy, the canopy extends at an angle relative to the surface, the angle varying with the wind force, and when there is de minimis wind force, the canopy is in contact with the surface at the trailing end (the canopy is only supported at the trailing end by the wind, therefor it will hang downward and contact the surface when there is no wind).
Regarding Claim 28, Kang teaches that the frame comprises a plurality of longitudinally-extending sections (100, 110, and 320).
Regarding Claim 29, Kang teaches that the plurality of longitudinally-extending sections are arrangeable so that at least a first longitudinally-extending section (320 on one side) and a second longitudinally-extending section (320 on the opposite side) are each engageable with the surface at first ends thereof and are coupleable to one another about opposing, second ends or are each respectively coupleable to first and second ends of at least one intermediate longitudinally-extending section (such as 110/100) arranged therebetween.
Regarding Claim 35, Kang teaches that the frame is directly engageable with the surface (at 320).
Regarding Claim 36, Kang teaches two frames (100 and 100’) each being engageable with the surface, wherein the canopy is coupleable with the first frame (100) about the suspension end and the canopy is coupleable with the second frame (100’) about the opposing trailing end (see Fig. 3).
Regarding Claim 37, Kang teaches an object (320 at the end of 330) engageable with the frame or with the canopy to act as a counterweight against a wind force applied to the canopy so that the frame remains engaged with the surface when the wind force is applied to the canopy.
Regarding Claim 38, Kang teaches a cord (330) having a first end (310) and a second end, the first end or the second end of the cord being coupleable to the frame or the canopy (310 is coupleable to both).
Regarding Claim 39, Kang teaches an anchor (320) coupleable to the other of the second end or the first end of the cord and being in contact with the surface so that the frame remains engaged with the surface when a wind force is applied to the canopy.
Claims 21, 22-25, 34, and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 101315166 (Kang).
Regarding Claim 21, Kang teaches a system for providing shade onto a surface, the system comprising: a frame (100) engageable with the surface (at 110/320); a canopy (200/400) extending between a suspension end (toward 210) and an opposing trailing end (toward 100’), the suspension end of the canopy being coupleable (via 210) with the frame about a portion of the frame.
Regarding Claim 22, Kang teaches that the canopy is a unitary canopy or comprises a plurality of sheets (200 and 400) of material coupleable together.
Regarding Claim 23, Kang teaches that the plurality of sheets of material are selectively coupled together so that a first canopy (200) is coupled with the frame about a suspension end (210) and a suspension end (toward 240) of a second canopy (400) is removeably coupled to a trailing end of the first canopy.
Regarding Claim 24, Kang teaches that the canopy has at least one set of parallel sides (the front and rear edges at 100 and 100’ are parallel).
Regarding Claim 25, Kang teaches that the canopy has two sets of parallel sides (the front and rear edges at 100 and 100’ are parallel and the side edges along the bottom edge of 400 are parallel).
Regarding Claim 34, Kang teaches that the frame comprises a singular, longitudinally-extending section (100).
Regarding Claim 40, Kang teaches kit comprising packaging containing at least: a frame according to claim 21; a canopy according to claim 21; a fastener capable being coupled to or engaged with the trailing end of the canopy; an anchor capable of being in contact with the surface; and a cord capable of being coupled to or engaged between the fastener and the anchor.
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 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over Kang as applied to Claim 21 above in view of Jager in US Patent 5927311. Kang teaches that the suspension end of the canopy is coupleable to a second, non-coextensive longitudinally-extending section of the frame (the central portion of frame 100), but is silent on the use of a sectional frame with a cable. Jager teaches a shading system including a frame (50) comprising a plurality of longitudinally-extending sections (50/60/62) and a cable (71) extending through the plurality of longitudinally-extending sections of the frame from the first end (74) of a first longitudinally-extending section to the first end (76) of a second longitudinally-extending section and any of the at least one intermediate longitudinally-extending sections arranged therebetween, wherein the plurality of longitudinally-extending sections are arrangeable so that they are non-coextensive relative to one another (Fig. 5), wherein a first longitudinally-extending section (58 with portion with end 74) is engaged with the surface and a second, non-coextensive longitudinally-extending section (60) is engaged with the first longitudinally-extending section so that the second, non-coextensive longitudinally-extending section is arranged at a non-zero angle relative to a longitudinal axis of the first longitudinally-extending section. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Kang by using a sectional frame as taught by Jager in order to allow the user to more compactly store the device when not in use. Such a device, as modified would include the suspension end of the canopy coupled to the second, non-coextensive longitudinally-extending section (the second section of Jager correlates to the central portion of the Kang frame).
Claims 28 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Kang as applied to Claim 21 above in view of Moss in US Patent 3394720. Kang is silent on the use of a telescoping frame. Moss teaches a frame (14), wherein the frame comprises a plurality of longitudinally-extending sections (50/52/54) and wherein the plurality of longitudinally-extending sections are arranged telescopically with one another such that a second longitudinally-extending section (52) is receivable in and extendable from a first longitudinally-extending section (50). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the frame of Kang by using a telescoping frame as taught by Moss in order to more compactly store the frame when not in use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH C. HAWK whose telephone number is (571)272-1480. The examiner can normally be reached M-F 9am to 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Dunn can be reached at 5712726670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NOAH C. HAWK
Primary Examiner
Art Unit 3636
/Noah C. Hawk/Primary Examiner, Art Unit 3636
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