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 (IDS) submitted on 09/20/2024, 12/03/2024, and 08/14/2025 was considered by the examiner.
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 1, 9, 10, 11, 12, 14, 17, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 32, 32, and 33 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, 17, 18, 19, 1, 9, 3, 4, 5, 6, 7, 11, 12, 13, 14, 15, 17, 18, and 19 respectively of U.S. Patent No. 12134896. Although the claims at issue are not identical, they are not patentably distinct from each other because said claims of the US Patent No.12134896 encompasses all the limitations in the claims of instant application.
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 13 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.
The term “regular roof tile” in claim 13 is a relative term which renders the claim indefinite. The term “regular roof tile” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The disclosure has not specified was is regular and irregular roof tile.
The term “labyrinth-like sealing” in claim 13 is a relative term which renders the claim indefinite. The term “labyrinth-like sealing” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The disclosure has not specified was a labyrinth-like is or to what degree to labyrinth it is.
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, 2, 3, 4, 6, 7, 8, 11, 12, 13, 14, 15, 16, 17, 19, 20, 21, 22, 23, 24, 25, and 27-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seery US20180351501.
Claim 1. Seery discloses a solar roof tile (100) for covering a pitched roof and for being mounted to battens of the pitched roof by means of a holder comprising an oblong beam (312) extending in a longitudinal direction and comprising a first support (at 316) supported in a mounted position on a first upper batten (304) of the pitched roof and a second support supported in the mounted position on a second lower batten (304 in Fig.3C); wherein at least one rest (surface of 318 and 334) is interconnected to the solar roof tile as a separate part for holding the solar roof tile on the holder.
Claim 2 and 15. Seery discloses connection of the solar roof tile and the rest is done by means of a mechanical connection (114 and P.0044) or by means of an adhesive.
Claim 3 and 16 falls as an unaddressed alternative as the option of the mechanical connection of claim 2 and 15 was addressed.
Claim 4 and 17. Seery discloses the rest is at least partially made from an elastic material (P.0060).
Claim 6 and 19. Seery discloses a drain channel extending in the longitudinal direction to drain atmospheric water along a longitudinal outer edge of the solar roof tile is incorporated in the rest (324 functions as a drainage channel – P.0051).
Claim 7 and 34. Seery discloses a multiplicity of drain channels is incorporated into the rest, thereby providing a labyrinth sealing with a thereupon resting solar roof tile (between 332, Fig.4A).
Claim 8. Seery discloses a rib (326) extending in the mounted position adjacent to the drain channel between two neighboring solar roof tiles is integrally formed with the rest.
Claim 11 and 32. Seery discloses the solar roof tile comprises a strip-like sealing element (124) extending parallel to at least a longitudinal outer edge or a horizontal outer edge of the solar roof tile (Fig.1B).
Claim 12 and 33. Seery discloses the sealing element (124) is arranged adjacent to the horizontal outer edge in an area shaded by an overhang section of the above neighboring solar roof tile on a face of the solar roof tile, which is in the mounted position facing the sun (P.0045:10-17).
Claim 13 as best understood. Seery suggest the rest is configured for interconnecting a regular roof tile in a water sealing manner by a labyrinth-like sealing.
Claim 14. Seery discloses solar roof tile (100) for covering a pitched roof and a holder for the solar roof tile for being mounted to the battens of the pitched roof, comprising: a. an oblong beam (312) extending in longitudinal direction and comprising a first support (at 316) supported in a mounted position on a first upper batten (304) of a pitched roof and a second support supported (at 320) in the mounted position on a second lower batten (304, Fig.3C); b. at least one rest (surface of 318 and 334) being interconnected to the solar roof tile as a separate part; and c. a drain channel (324) arranged adjacent to the at least one rest and extending in the longitudinal direction to drain atmospheric water along a longitudinal outer edge of the solar roof tile (P.0051 and Fig.4A).
Claim 20. Seery discloses the first support and the second support each comprise at least one first bearing area (318) supporting the oblong beam with respect to the first upper batten and the second lower batten in general perpendicular to its extension in the longitudinal direction (Fig.4A).
Claim 21. Seery discloses the first support and/or the second support comprise at least one second bearing area (318) supporting the oblong beam with respect to the first upper batten and the second lower batten in the longitudinal direction (Fig.4A).
Claim 22. Seery discloses perpendicular to the extension of the oblong beam the first bearing area of the first support is spaced a first distance apart from the rest and the first bearing area of the second support is spaced a second distance apart from the rest (6), wherein the second distance is greater than the first distance, such that the solar roof tile is arranged in the mounted position at its lower end inclined with respect to a plane defined by the first upper batten and the second lower batten (as shown in Figs.3C and 4A).
Claim 23. Seery discloses the first bearing area is spaced a third distance apart from an upper end of the oblong beam in the mounted position and the second bearing area is spaced a fourth distance apart from a lower end of the oblong beam in the mounted position, wherein the fourth distance is greater than the third distance, such that the oblong beam comprises an overhang section, which extends in the mounted position of the holding means in the longitudinal direction beyond the second lower batten (Fig.3C).
Claim 24. Seery discloses the oblong beam has at least in one area a C-shaped or U-shaped cross-section perpendicular to the longitudinal direction (U-shaped of 334 and 324).
Claim 25. Seery discloses the holder comprises a rib (326) extending in the mounted position adjacent to the drain channel between two neighboring solar roof tiles.
Claim 27. Seery discloses the holder comprises at least one securing element (318) for securing the solar roof tile in the mounted position in the longitudinal direction.
Claim 28. Seery discloses the at least one securing element is formed as a hook attached to the oblong beam (illustrated as 318 in Fig.4B).
Claim 29. Seery discloses the first support and/or the second support comprise at least one connection means (314) arranged in the respective first bearing area and/or the respective second bearing area to fasten the first support and/or the second support to the respective first upper batten and/or the respective second lower batten.
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 5, 18, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Seery US20180351501 as applied to claims 1 and 14 above.
Claims 5 and 18. Seery is silent on the rest is formed as a rubber mat, however it
would have been obvious to one of ordinary skill in the art before the filing date of the
instant invention to form the rest as a rubber mat for its superior elastic properties, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim 26. Seery is silent on the oblong beam being made at least partially from stamped and bent sheet metal and/or injection molded plastic material, however it would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to form the material from a plastic material with the motivation to be anti-corrosive and can withstand time against the elements. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to attached NOTICE OF REFERENCE CITED.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BABAJIDE A DEMUREN whose telephone number is (571)270-7017. The examiner can normally be reached Mon-Fri 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at 5712726754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BABAJIDE A. DEMUREN
Primary Examiner
Art Unit 3633
/BABAJIDE A DEMUREN/Primary Examiner, Art Unit 3633
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