DETAILED ACTION
This is a final Office Action on the merits for U.S. App. 18/890,195. Receipt of the amendments and arguments filed on 06/15/2026 is acknowledged.
Claims 1-20 are pending.
Claims 1-20 are examined.
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 7 and 10-15 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.
Claim 7 defines “a plurality of panels,” which renders the claimed invention indefinite since only a single panel has been previously defined and one of ordinary skill in the art would not know whether a plurality of panels are provided in addition to the panel of claim 1 or whether claim 1 is to further comprise a plurality of such panels as defined, where the panel of claim 1 comprises of one of such a plurality. For examining purposes and in light of the specification and drawings, claim 7 is considered to further define claim 1 as comprising a plurality of such panels as defined and the panel of claim 1 is part of such a plurality of panels.
Claim 10 defines “each of the lower portions,” which renders the claimed invention indefinite since lower portions have been defined for both the clips and battens and one of ordinary skill in the art would not know which lower portion of which element is being referred back to. For examining purposes and in light of the specification and drawings, the lower portions of the clips are being defined in claim 10. Moreover, claims 11 and 12 are rendered indefinite for depending upon claim 10. Claims 13-15 include similar limitations and are similarly rejected and interpreted.
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.
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Buchanan (U.S. Patent 4,959,939) in view of Uemi (JP 2002004512).
Regarding claim 1, Buchanan discloses a system (#10) configured to cover an exterior surface (#14) of a structure (see figure 1), the system comprising:
a panel (#12) having a plurality of spaced apart ribs (#22 and #18/20), wherein adjacent ribs are separated by a flat (the flat portions between adjacent ribs #22/18/20/24 as depicted in figure 1, where such flat portions need not be completely horizontal as presently defined);
a plurality of clips (#42), each of the plurality of clips configured to seat against a portion of one of the plurality of ribs (see figures 2 and 4);
a plurality of fasteners (#16) configured to attach the plurality of clips to the plurality of spaced apart ribs (see figure 4); and
a plurality of battens (#40), each of the plurality of battens connected to an associated clip in a snap together arrangement (see figures 2 and 4).
Buchanan discloses the claimed invention except specifically for each of the plurality of battens comprise a first and second lower batten portion seated against a corresponding flat of the panel. Figure 4 of Buchanan instead depicts the battens #40 comprise of ends spaced from the panel #12. However, it is highly well known in the art, as evidenced by Uemi, that such roof assemblies comprising of a panel #1 which a clip #2 and batten #3 are to attach to in order to secure the panel #1 to the roof surface can be formed so that the batten #3 comprises of retaining strips #19 to clip onto retaining strips #18 of the clip and bottom portions of the batten #3 comprises of lower portions #12 that extend below such retaining strips #19 to a lower edge #13 in order to contact flat portions of the panel #1. See figures 2 and 6. Therefore, it would have been obvious before the effective filing date of the claimed invention to have included first and second lower portions below the retaining portions #68 and #70 of the batten of Buchanan, as taught in Uemi, in order to contact the flat portions of the panel and thus further prevent the ingress of water at such locations, such as during strong wind instances. See paragraph 30 of the English translation of Uemi.
Regarding claim 2, Buchanan in view of Uemi render obvious the exterior surface has a vertical orientation (col. 3, ll. 24-28 of Buchanan disclose the panels can be attached to a sloped roof or a vertical wall, where such an exterior surface is not positively defined nor is the system attached to such a surface positively defined).
Regarding claim 3, Buchanan in view of Uemi render obvious the exterior surface has a sloped orientation (col. 3, ll. 24-28 of Buchanan disclose the panels can be attached to a sloped roof or a vertical wall, where such an exterior surface is not positively defined nor is the system attached to such a surface positively defined).
Regarding claim 4, Buchanan in view of Uemi render obvious each of the plurality of spaced apart ribs has a parallel orientation with adjacent ribs (see figure 1 of Buchanan, where the ribs extend parallel one another along the dimension of the panel which extends into the page of the figure).
Regarding claim 5, Buchanan in view of Uemi render obvious each of the flats is configured to seat against the exterior surface of the structure (see figure 1 of Buchanan, where such flats are not positively positioned as defined but where the flats of Buchanan are configured to be so positioned).
Regarding claim 6, Buchanan in view of Uemi render obvious each of the plurality of panels has a length, and wherein the length of each of the panels is in a range of from 84 inches to 108 inches (col. 1, ll. 17-24 of Buchanan disclose the panels can comprise of a length of up to 30 feet and thus overlaps the length range as defined so as to be considered to anticipate such limitations). However, for compact prosecution purposes and if Buchanan is not considered to cover such a narrow range as defined, it would have been obvious before the effective filing date of claimed invention to have constructed the length of the panels of Buchanan to meet the length range as defined in order to cover roofs or walls of specification lengths/widths and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 7, Buchanan in view of Uemi render obvious a plurality of panels can be organized in a nested and stacked arrangement wherein each of the plurality of ribs of a first panel of the plurality of panels align with and seat against an associated rib of an adjacent second panel of the plurality of panels and each of the plurality of flats of the first panel of the plurality of panels align with and seat against an associated flat of the adjacent second panel of the plurality of panels (due to the oblique angled shape of each of the ribs of the panels #12 of Buchanan, such panels can be stacked upon one another such that the ribs fit within one another for a stacked transportation orientation, where such a stacking is not positively defined).
Regarding claim 8, Buchanan in view of Uemi render obvious each of the plurality of clips has a connector segments (Buchanan; #44) configured to seat against a corresponding portion of a rib (see figures 2 and 4 of Buchanan).
Regarding claim 9, Buchanan in view of Uemi render obvious each of the clips has a plurality of side portions (Buchanan; #46 and #48), wherein each of the side portions extend from the connector segment to lower portions (Buchanan; #58/60; see figure 5).
Regarding claim 10, Buchanan in view of Uemi render obvious in an installed orientation, each of the lower portions is configured to cooperate with a flat to form a pocket (see figures 2 and 4 of Buchanan, where the top surface of the flats to the right and left of the ribs #22/#18 and #20 form a pocket with the lower portions #58 and #60 of the clip so as to receive a portion of the batten therein).
Regarding claim 11, Buchanan in view of Uemi render obvious the pocket opens in a direction away from the rib (see figures 2 and 4 of Buchanan, where the pocket opens away from the rib so as to receive the batten that extends towards the rib).
Regarding claim 12, Buchanan in view of Uemi render obvious each of the pockets is configured to receive a portion of the clip in the snap together arrangement (see figures 2 and 4 of Buchanan, where the pockets are configured to receive the rim portions #58 and #60 of the clip and the channels #68 and #70 of the battens in the pocket to form the snap arrangement).
Regarding claim 13, Buchanan in view of Uemi render obvious each of the lower portions extends in a direction toward an opposing lower portion (see figures 2, 4, and 5 of Buchanan, where the rim portions #58 and #60 curve back towards the opposite side of the clip to form the snap arrangement of the clip).
Regarding claim 14, Buchanan in view of Uemi render obvious wherein each of the lower portions extends in a direction toward the rib (see figures 2, 4, and 5 of Buchanan, where the rim portions #58 and #60 curve back towards the opposite side of the clip and toward the rib to form the snap arrangement of the clip).
Regarding claim 15, Buchanan in view of Uemi render obvious the claimed invention except for each of the lower portions forms an angle with a horizontal axis, and wherein the angle is in a range of from 15 to 25 degrees. The lower portions #13 of Uemi which would be added to Buchanan extend at an acute angle relative to the horizontal away from the rib, where the lowermost free end portions of the lower portions of the batten are to contact with the batten. It appears the angle at which such a lower portion of the batten extends depends upon the height of the clip and rib of the panel and the height of the retaining strips between the clip and batten from the panel. The height of the rib and clip in Uemi from the retaining strips appears much higher above the panel than the same location of Buchanan and thus the angle required in Uemi would be much higher than that for the one needed for Buchanan. Therefore, it would have been obvious before the effective filing date of the claimed invention to have extended such free ends of the lower portions of Buchanan such that they extend 15 to 25 degrees relative to horizontal in order to properly extend such lower portions outward and prevent the ingress of water upwardly past such portions depending upon the height of the rib and also since it has been held that changing the shape of an object is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed lower portions was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Regarding claim 16, Buchanan in view of Uemi render obvious the claimed invention except for each of the plurality of clips has a length, and wherein the length of each of the clips is in a range from 84 inches to 108 inches. Buchanan does disclose such panels can comprise of a length of up to 30 feet or more and 38 inches of width or more. Moreover, the length of the clips would not change the overall function of such clips other than such clips would be able to hold down longer sections of the panel and Applicant does not provide any criticality for the length of such clips. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the clips of Buchanan to comprise of a length so as to range from 84 to 108 inches in order to hold panels of longer lengths does and thus strengthen the panels from uplift forces and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 17, Buchanan in view of Uemi render obvious each of the plurality of fasteners is configured to extend through a corresponding clip of the plurality of clips and through a corresponding rib of the plurality of ribs (see figures 2 and 4 of Buchanan).
Regarding claim 18, Buchanan in view of Uemi render obvious each of the plurality of fasteners has the form of a pan head sheet metal screw (see figures 3 and 4 of Buchanan, where the fasteners #16 extend through sheet metal panels and comprise of a flat head portion attached thereto so as to be in “the form of a pan head sheet metal screw” as broadly defined).
Regarding claim 19, Buchanan in view of Uemi render obvious each of the first lower batten portion and the second lower batten portion is configured for insertion into an associated pocket (see figures 2 and 4 of Buchanan, where the lower batten portions of Uemi provided within Buchanan would be inserted within a respective pocket thereof), and wherein the first lower batten portion and the second lower batten portion extend in a direction toward each other (see figures 2 and 4 of Buchanan, where the lower portions of Buchanan in view of Uemi would comprise of a hem at the lower edge #13 as depicted in figure 4 of Uemi which extend towards one another).
Regarding claim 20, Buchanan in view of Uemi render obvious the opposing lower portions of the clips is configured to provide a downward clamping action against the first lower batten portion and the second lower batten portion of an associated batten of the plurality of battens, thereby further securing the associated batten in place (see figures 2 and 4 of Buchanan and figure 2 of Uemi, where the lower portions of the batten are configured to engage the lower portions of the clips to secure the batten thereto).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because Applicant’s amendments to the claims required different rejections and secondary reference which were not previously used to meet the newly added claim limitations.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE V ADAMOS whose telephone number is (571)270-1166. The examiner can normally be reached Monday - Friday 9-5.
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635
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