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 with traverse of Group I in the reply filed on 6/26/2026 is acknowledged. Upon further review, the previous restriction is being withdrawn; and claims 1-20 are pending and examined.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
For example, Figures 3-8 and 13-20 are color photographs and color 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 one or more motorized actuators 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 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 1-20 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.
Re claim 1, lines 4-6; a citation “the one or more carriage guides are mated with the vertical seam causes the frame to ride along the vertical seam” is confusing and indefinite because it’s unclear whether the Applicant is positively and claimed with “a vertical seam of a metal roof”? Clarification is required. Claims 2-8 depending upon the rejected claim 1 are also rejected.
For the examination purposes, the claims are being treated as a combination with a vertical seam of a metal roof.
Re claim 2, line 1; a phrase “whose” renders the claim indefinite and confusing because it’s unclear whether “whose” referring to which structure? Claims 3-8 depending upon the rejected claim 2 are also rejected. Claims 5, 10, 18; having the same issue as mentioned are also rejected.
Re claim 2, line 1-2; a citation “wherein the sealing material comprises a polyester strip whose top and bottom surfaces are coated with a roofing sealant” is confusing and indefinite because it’s unclear if the Applicant is positively combined with the sealing material, since the claim 1, lines 7-8 cite “configured to dispense sealing material…”? Clarification is required. Claims 3-8 depending upon the rejected claim 2 are also rejected.
Re claim 6, line 2; a phrase “it” renders the claim indefinite and confusing because it’s unclear whether “it” referring to which structure? Claims 7-8 depending upon the rejected claim 6 are also rejected. Claims 14, 18, 19; having the same issue as mentioned are also rejected.
Re claim 9, line 1; a claimed preamble sole cites “A method, comprising” is confusing and indefinite because it’s unclear whether “A method” of making, installing, sealing or assembling…? Clarification is required. Claims 10-16 depending upon the rejected claim 9 are also rejected.
Re claim 17, line 1; a claimed preamble sole cites “A system, comprising” is confusing and indefinite because it’s unclear whether “A system” of which: roof sealing or assembling…? Clarification is required. Claims 18-20 depending upon the rejected claim 17 are also rejectedClaim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US No. 9,970,195 to Vasquez. Re claim1: Vasquez discloses an apparatus 100 (fig. 1), comprising: a frame 102A/102B having a handle 104A/104B; one or more carriage guides 124A/124B extending downward from the frame 102A/102B and configured to mate with a vertical seam of a metal roof (col. 3, lines 41-43) wherein pushing or pulling on the handle 102A/102B while the one or more carriage guides 124A/124B are mated with the vertical seam causes the frame 102A/102B to ride along the vertical seam; and a set of rollers 116/118/120 coupled to the frame 102A/102B and configured to dispense sealing material 300 onto the vertical seam as the frame rides along the vertical scam (see Fig. 5).
Re claim 9: Vasquez discloses a method, comprising: obtaining a vertical seam of a metal roof (col. 3, lines 41-43); and applying a sealing material (col. 1, lines 25-27) to the vertical seam, via a device 100 that comprises: a frame 102A/B having a handle 104A/B; one or more carriage guides 124A/B extending downward from the frame 102A/B and configured to mate with the vertical seam, wherein pushing or pulling on the handle 104A/B while the one or more carriage guides 124C/B are mated with the vertical seam causes the frame 102A/B to ride along the vertical seam; and a set of rollers 120A-C coupled to the frame 102A/B and configured to dispense the sealing material (see Figs. 5A-C) onto the vertical seam as the frame rides along the vertical seam.
Re claim 10: wherein the sealing material comprises a pressure sensitive adhesive tape (col. 1, lines 29-32) whose top surface is coated with a roofing sealant (see col. 1, lines 25-27).
Re claim 11: wherein the set of rollers 120A-C comprise: a first roller that is configured to carry an uncoated spool of the pressure sensitive adhesive tape (col. 1, lines 29-32), wherein the uncoated spool of the pressure sensitive adhesive tape unspools as the frame rides along the vertical seam (Fig. 5C).
Re claim 12: wherein the set of rollers 120A-C comprise: one or more second rollers 116A/B that are configured to be drenched in the roofing sealant and to contact the top surface of the pressure sensitive adhesive tape (col. 1, lines 29-32) as the pressure sensitive adhesive tape unspools from the first roller, thereby coating the top surface of the pressure sensitive adhesive tape with the roofing sealant (col. 1, lines 25-27).
Claim(s) 17 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US No. 6,588,475 to Simon, Jr. et al. (‘Simon’).
Re claim 17: Simon discloses a system 2 (Fig. 2), comprising: a frame 4A/B; one or more motorized actuators 26/70 coupled to the frame 4A/B and configured to propel the frame 4A/B along a vertical seam of a metal roof; and a set of rollers 10 coupled to the frame 4A/B and configured to dispense sealing material M2 onto the vertical seam as the frame 4A/B is propelled along the vertical seam (col. 2, lines 40-44); and wherein the one or more motorized actuators 26/70 are motorized wheels 8 (i.e. wheels 8 are moved along with 26/70, Fig. 2).
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 (i.e., changing from AIA to pre-AIA ) 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, 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) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US No. 9,970,195 to Vasquez in view of US No. 8,668,795 to Tippins et al. (‘Tipins’). Vasquez discloses an apparatus 100 (fig. 1), comprising: a frame 102A/102B having a handle 104A/104B; one or more carriage guides 124A/124B extending downward from the frame 102A/102B and configured to mate with a vertical seam of a metal roof (col. 3, lines 41-43) wherein pushing or pulling on the handle 102A/102B while the one or more carriage guides 124A/124B are mated with the vertical seam causes the frame 102A/102B to ride along the vertical seam; and a set of rollers 116/118/120 coupled to the frame 102A/102B and configured to dispense sealing material 300 onto the vertical seam as the frame rides along the vertical scam (see Fig. 5); wherein the set of rollers 116/118/120 comprise: a first roller that is configured to carry an uncoated spool (Figs. 5A-5C); one or more second rollers that are configured to be drenched in the roofing sealant and to contact the top and bottom surfaces of the strip unspools from the first roller, thereby coating the top and bottom surfaces of the strip with the roofing sealant. Vasquez discloses basic structures of the claimed invention as stated but does not disclose expressly wherein the sealing material comprises a polyester strip. Tippins discloses a method of pre-priming a membrane, including a polyester strip (Fig. 1, col. 6, last line). It would have been obvious to one with ordinary skill before the effective filing date of the claimed invention to provide Vasquez a sealing material comprises a polyester strip as suggested by Tippins in order to optimize a sealing result.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US No. 6,588,475 to Simon in view of US No. 8,668,795 to Tippins et al. (‘Tipins’). Simon discloses a system 2 (Fig. 2), comprising: a frame 4A/B; one or more motorized actuators 26/70 coupled to the frame 4A/B and configured to propel the frame 4A/B along a vertical seam of a metal roof; and a set of rollers 10 coupled to the frame 4A/B and configured to dispense sealing material M2 onto the vertical seam as the frame 4A/B is propelled along the vertical seam (col. 2, lines 40-44). Simon discloses basic structures of the claimed invention as stated but does not disclose expressly wherein the sealing material comprises a polyester strip. Tippins discloses a method of pre-priming a membrane, including a polyester strip (Fig. 1, col. 6, last line). It would have been obvious to one with ordinary skill before the effective filing date of the claimed invention to provide Simon a sealing material comprises a polyester strip as suggested by Tippins in order to optimize a sealing result.
Allowable Subject Matter
Claims 5-8 and 13-16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892).
Contact Information
Any inquiry concerning this communication or earlier communication from the examiner should be directed to CHI Q. NGUYEN whose telephone number is (571) 272-6847. The examiner can normally be reached on Monday-Friday from 7AM-5PM or email: chi.nguyen@uspto.gov. If attempt to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Brian Mattei can be reached at (571) 270-3238. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197.
/CHI Q NGUYEN/
Primary Examiner, Art Unit 3635
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