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 without traverse of Claims 1-10 in the reply filed on 6/4/2026 is acknowledged.
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 9 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.
Claim 9 recites “at least one of” paired with the conjunction “and” making it unclear if one or all panel require holes. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 886 (2004) (finding the term “and” connotes a conjunctive list that applies to each item of the list following “at least one of,” thus requiring “at least one value from each category”); see also Ex parte Jung, 2016-008290 (March 22, 2017) (reinforcing SuperGuide and indicating that “at least one of A and B” is reasonably interpreted as “at least one of A and at least one of B,” and to properly indicate A and B as alternatives, the language “at least one of A or B” is appropriate). Examiner assumes only one is required and Applicant should either conform this intent on the record or amend “and” to “or.”
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.
Claim(s) 1, 2, 4-7, 9, and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wayback Machine: The Home Depot “How to Install a Gule-Up Shower Enclosure” [online] 19 November 2019, [retrieved via wayback machine on 6/25/2026] at https://web.archive.org/web/20191119133523/https://www.homedepot.com/c/ah/how-to-install-a-glue-up-shower-enclosure/9ba683603be9fa5395fab908d3d2524 (hereinafter “Wayback”).
Regarding Claims 1-2 and 6, a method for installing a set of panels, comprising:
preparing a substrate at an installation location (See section 3, “Prep the walls”),
the substrate extending to a first location, a second location, and a third location (teaching two sides and a rear wall as three locations);
dry-fitting one or more panels at the installation location (See section 7, “dry fit the shower” including dry fitting all panels);
applying, to a first portion of the substrate at the first location, an adhesive according to a pattern (See section 8, “Apply adhesive” wherein adhesive is applied according to a zigzag pattern);
installing a first panel to the first location;
applying, to a second portion of the substrate at the second location, the adhesive according to the pattern;
installing a second panel to the second location;
applying, to a third portion of the substrate at the third location, the adhesive according to the pattern;
installing a third panel to the third location (See sections 9 and 10, “Install the side panels” and “Install the back panel” wherein two side walls and back wall are three locations, each previously applied with zigzag pattern adhesive as previously recited); and
applying one or more barriers along seams associated with the first panel, the second panel, and the third panel (See section 12, “Caulk and finish” wherein caulk, i.e. sealant, is applied to the seams and around the top and bottom near the tub, the exterior and inter barrier respectively, wherein caulk is a moisture barrier).
Regarding Claim 4, Wayback teaches trimming may form a “cleaner cut” implying a previous cut, such as would have been standard in forming a panel (See section 5, “trim the panels” and note this trimming itself may be considered “pre-cutting” and forming a kit for installation).
Regarding Claims 5 and 7, Wayback teaches applying corner panels, which may be previously trimmed with scissors (See Sections 5 and 11). These trimmed corner panels are trim pieces as claimed. These same panels extend between the back and side panels at the corner and overlaps them to reinforce and thus “brace” the panels in this region. Since Claims 5 and 7 are separately dependent on Claim 1, these corners panels are thus also reasonably a brace extending between the second and third panel, i.e. the side and back panel.
Regarding Claims 9 and 10, Wayback teaches openings in the panels for the fixtures (See Section 6, “Cut the holes for the faucet”) teach caulking the fixture, plying applying a bead in the opening around the shower fixture (See Section 12).
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wayback as applied to Claim 1, and further in view of Penaloza (US 2022/0325530).
Regarding Claims 3 and 8, Wayback teaches the method of Claim 1 as described above. Wayback teaches an outer shower layer panel and applying a caulking sealant, but is silent as to the materials of either. However, it would have been apparent common shower materials for each would have been suitable. Further porcelain is a common material for exterior shower paneling and silicone is a common caulk for sealing applications (See, for example, Penaloza, page 1, paragraph [0008], page 2, paragraph [0017], page 5, paragraph [0106], page 6, paragraph [0108]-bottom of column, and page 8, paragraph [0119], indicating shower panels and finishing tiles are porcelain and joint sealant and caulking material is silicone in common use shower applications). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize porcelain panels and silicone caulk in Wayback. Such material are common for this purpose and would have predictably been suitable and standard material for carrying out the intended installation method.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Smith (US 2005/0028453), teaching an adhesive dot pattern for attaching shower panels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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