DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 11,512,480 B1 (hereafter the ‘480 patent and equivalent) addressing the filing 11 November 2024.
The following is the status of the claim under current review:
Patented claims 1-18 are cancelled.
Claims 19-38 are new
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 .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,512,480 B1, which issued from App. No. 17/853701 having a filing date of 29 June 2022. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘701 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the file indicates no maintenance fees are due at this time. The next fee has a 7.5-year window opening 29 November 2029. The window with surcharge opens 30 May 2030, and the last day to pay the fee with surcharge is 29 November 2030.
Information Disclosure Statement
The IDS dated 11 November 2024 is entered.
Consent of Assignee
The Consent of Assignee dated 11 November 2026, is entered.
35 USC 251
35 USC 251 – Improper Oath:
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
The reissue Oath/Declaration filed 11 November 2024, is defective for the following (see 37 CFR §1.175 and MPEP §1414):
The error statement is improper. As applicant noted that this is a broadening reissue, the error statement must identify a claim that the application seeks to broaden and a single word, phrase or expression in the specification or original claimed how it renders the original patent wholly or partly inoperative or invalid. See MPEP 1414(II). See also the same section which discusses addressing language in claims subsequently cancelled, as is in the present reissue.
Applicant must provide a new Oath/Declaration addressing the above noted issues. Further, applicant should respectfully note that if a specification will not be included in the subsequent Oath/Declaration, the box “is attached hereto” should not be checked, but rather applicant should check the box stating “was filed on _________”.
As a result of the defective Oath/Declaration, claims 19-38 stand rejected under 35 USC §251 as set forth above. See 37 CFR §1.175.
Claim Rejections - 35 USC § 112
35 USC 112(b) - Indefiniteness:
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 19-38 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.
Claims 19 and 38: the language, “wherein the first storage bracket and the second storage bracket are configured to receive at least one roofing material, such that the at least one roofing material is positioned on the base plate of the first storage bracket and the base plate of the second storage bracket” (claim 19: last paragraph, and equivalent language in the last paragraph of claim 38) is indefinite as the language “configured to receive” claims a functional relationship with respect to the roofing material and brackets and does not positively claim the roofing material. Later the claim states “the at least one roofing material is position…” which positively claims the roofing material. As a result, it is unclear if the roofing material is positively claimed or is claimed only in functional terms. Applicant is requested to amend the claims to either positively claim the roofing material or to have the language directed to the roofing material in functional terms only. This also impacts treatment of dependent claims with language directed to the roofing material.
Claim 31: the language, “wherein the arm base of each of the plurality of storage brackets is attached to the first arm of the storage bracket” is indefinite as written as “the storage bracket” is singular, but reference is previously made to “the plurality of storage brackets”. As written it reads as though each arm base from all the brackets are attached to a single bracket.
Claim 34: “steeped slope” is indefinite as “steeped” is a relative term of art and the metes and bounds of what constitutes this limitation cannot be determined.
Claim 37: “at least one roofing material” (line 17) is indefinite as this limitation has already been provided and lacks antecedent basis.
Those claims listed under this heading but not directly addressed are rejected either claiming features directed to unclaimed roofing material or as being dependent from a rejected claim, either directly or indirectly.
Claim 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.
Below is a substantial reproduction of the claim(s) addressing all limitations with the examiner’s comments in bold italics;
Claim(s) 38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leendertse (U.S. Publication 2007/0034449/A1) .
Claim 38: A storage bracket (29), comprising:
a base plate (30),
wherein the base plate extends in a first direction (as shown),
a first arm (32),
wherein the first arm extends from the base plate in a second direction oblique to the first direction (as shown generally in Fig. 4),
a second arm (34),
wherein the second arm extends from the first arm in a third direction oblique to the first direction (as shown in Fig. 4),
wherein the third direction is different from the second direction (as shown), and
wherein the storage bracket is configured to be installed on a roof deck (as shown it is configured to be installed using the broadest reasonable interpretation in light of the disclosure provided), and
wherein the storage bracket is configured to receive at least one roofing material (28 meets this limitation, which is functional language fully capable of being met by the prior art), such that the at least one roofing material is positioned on the base plate of the storage bracket and juxtaposed with the first arm (the examiner takes the position that as no language is provided to determine what constitutes “roofing material”, and that the storage bracket is “configured” to receive roofing material, this limitation would be met based on the type of material used).
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.
Claim(s) 19, 20 and 22-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontaine (U.S. Publication 2012/0267193 A1) in view of Davies (U.S. Patent 2,108,196)
Claim 19: Fontaine discloses A system, comprising:
a storage bracket (Fig. 1, generally),
wherein the of storage bracket includes
a base plate (1.0004),
wherein the base plate is attached to the roof deck (via portion of fasteners used with 1.004),
a first arm (see annotated Fig. 1 from Fontaine, below) ,
wherein the first arm extends from the base plate (as shown either directly or indirectly), and
a second arm (as labeled below),
wherein the second arm extends from the first arm (as shown),
While Fontaine does not specifically disclose a roof deck or a plurality of brackets installed on the roof deck, the system is clearly intended to be used in combination with a roof deck (see Title, disclosure in general). Davies discloses a similar support system that incorporates a plurality of brackets installed on a roof deck (as shown generally in Fig. 1). Regarding the roof deck, the examiner takes Official notice that use of the bracket in Fontaine would clearly be used with a roof deck, as the title and disclosure of the patent indicate use with a roof. Further, regarding having a plurality of brackets, Davies discloses multiple brackets used (see Fig. 1, generally). It would have been obvious at the time of filing to a person having ordinary skill in the art as a matter of duplication of parts to have this limitation because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). See MPEP §2144.04. The examiner takes the position that one having ordinary skill in the art would use as many brackets as necessary based on the article being supported.
The obvious modification of the prior art provides wherein the plurality of storage brackets includes a first storage bracket and a second storage bracket (as rendered obvious by Davies),
wherein the first storage bracket is spaced apart from the second storage bracket (as shown in Davies), and
wherein the first storage bracket and the second storage bracket are configured to receive at least one roofing material (as per the purpose). While the prior art does not disclose such that the at least one roofing material is positioned on the base plate of the first storage bracket and the base plate of the second storage bracket, the examiner takes Official notice that the purpose of the bracket is to have material used in conjunction with it, as this is the intended use, and one having ordinary skill in the art would place the material on the respective base plates based on the material to be used and based on the size of the material, which could require more than one bracket. .
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Annotated Fig. 1 from Fontaine
Claim 20: The obvious modification of the prior art provides The system of Claim 19, except specifically wherein one of the at least one roofing material is juxtaposed with the first arm of the first storage bracket and the second arm of the second storage bracket. The examiner takes the position that no language is provided in the claims to define the metes and bounds of the roofing material. As a result, it would have been obvious at the time of filing to a person having ordinary skill in the art to arrange the parts as necessary because rearrangement of parts is considered an obvious matter of design choice. (See In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)(the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice.) One having ordinary skill in the art would interrelate the roofing material with the bracket based on the shape and overall configuration of the roofing material in order to best support the material.
Claim 22: the obvious modification of the prior art provides The system of Claim 19, except specifically wherein the first arm of each of the plurality of storage brackets is 80° to 120° relative to the base plate of the storage bracket, though the limitation appears to be met, and as shown the angel is adjustable. It would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because differences in concentration (or temperature) will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the claimed angle in order to provide an optimal angle with the roof to maintain a stable and level surface for attachment.
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Claim 23: The obvious modification of the prior art provides The system of Claim 19, wherein the base plate of each of the plurality of storage brackets includes at least one hole (see holes on 1.004) that is configured to receive a corresponding fastener (functional language), and wherein the fastener is configured to removably fasten a corresponding one of the plurality of storage brackets to the roof deck (as per its purpose).
Claim 24: The obvious modification of the prior art provides The system of Claim 19,wherein the first arm of each of the plurality of storage brackets is integral with the base plate of the storage bracket (as shown; “integral” does not require they be monolithic).
Claim 25: The obvious modification of the prior art provides The system of Claim 19, except specifically wherein the second arm of each of the plurality of storage brackets is 15° to 85° relative to the base plate of the storage bracket. though the limitation appears to be met, and as shown the angel is adjustable. It would have been obvious at the time of filing to a person having ordinary skill in the art to have this limitation because differences in concentration (or temperature) will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such a limitation is critical. See M.P.E.P. §2144.05 "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454 (CCPA 1955) (Claimed process which was performed at a temperature between 40C and 80C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100C and an acid concentration 10%.) One having ordinary skill in the art would have the claimed angle in order to provide an optimal angle with the roof to maintain a stable and level surface for attachment.
Claim 26: The obvious modification of the prior art provides The system of Claim 19,wherein the second arm of each of the plurality of storage brackets is integral with the first arm (as shown; “integral” does not require they be monolithic).
Claim 27: The obvious modification of the prior art provides The system of Claim 19,wherein the base plate extends in a first direction (as shown), wherein the first arm extends in a second direction oblique to the first direction (as shown), wherein the second arm extends in a third direction oblique to the first direction (as shown), and wherein the third direction is different than the second direction (as shown).
Claim 28: The obvious modification of the prior art provides The system of Claim 19,wherein each of the plurality of storage brackets includes an arm base (1.017) extending from the second arm of the storage bracket (as shown).
Claim 29: The obvious modification of the prior art provides The system of Claim 28,wherein the arm base of each of the plurality of storage brackets extends in substantially the same direction as the base plate (as shown).
Claim 30: The obvious modification of the prior art provides The system of Claim 28,wherein the arm base of each of the plurality of storage brackets is integral with the second arm of the storage bracket (as shown; “integral” does not require they be monolithic).
Claim 31: The obvious modification of the prior art provides The system of Claim 28, wherein the arm base of each of the plurality of storage brackets is attached to the first arm of the storage bracket (as shown).
Claim 32: The obvious modification of the prior art provides The system of Claim 31,wherein the arm base of each of the plurality of storage brackets is attached to the first arm by at least one fastener (see annotated Fig. 3, below).
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Annotated Fig. 3 from Fontaine
Claim 33: The obvious modification of the prior art provides The system of Claim 19, except specifically wherein the at least one roofing material includes a plurality of roofing materials. It would have been obvious at the time of filing to a person having ordinary skill in the art as a matter of duplication of parts to have this limitation because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). See MPEP §2144.04. One having ordinary skill in the art would have as many roofing materials as necessary based on the intended use of the brackets.
Claim 34: The obvious modification of the prior art provides The system of Claim 19, except wherein the roof deck is a steeped slope roof deck. It would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate the bracket with a steep roof, as the use of the bracket in Fontaine is not limiting and one having ordinary skill in the art would use the bracket on a roof of any given pitch as desired.
Claim 35: The obvious modification of the prior art provides The system of Claim 34, except wherein the plurality of storage brackets includes a third storage bracket vertically adjacent to the first storage bracket, and a fourth storage bracket vertically adjacent to the second storage bracket. It would have been obvious at the time of filing to a person having ordinary skill in the art as a matter of duplication of parts to have this limitation because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). See MPEP §2144.04. One having ordinary skill in the art would use as many brackets as necessary based on the overall desired use.
Claim 36: The obvious modification of the prior art provides The system of Claim 35, wherein the first storage bracket and the second storage bracketed are configured to receive a first one of the at least one roofing material, and wherein the third storage bracket and the fourth storage bracket are configured to receive a second one of the at least one roofing material. The language “configured to” is functional language, and the prior art is fully capable of meeting the claimed function.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontaine in view of Davies and Kapner (U.S. Patent 6,046,399)
Claim 21: The obvious modification of the prior art provides The system of Claim 19, except wherein the at least one roofing material includes one or more of a photovoltaic module, a photovoltaic shingle, a roofing shingle, and a jumper module. Kapner provides a similar shaped mount that incorporates a solar panel (Abstract; see Figs. Generally). It would have been obvious at the time of filing to a person having ordinary skill in the art to incorporate a panel with the system in Fontaine, as the system can be used to support numerous articles and one having ordinary skill in the art would use the system as desired based on what is to be fastened.
Claim(s) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hubschmitt, Jr (U.S. Patent 1,562,965) in view of Davies.
Claim 37: Hubschmitt discloses A system, comprising:
a roof deck (Fig. 1: not labeled but clearly shown);
a storage bracket (1) installed on the roof deck (as shown),
wherein the storage bracket includes
a base plate (2),
wherein the base plate is attached to the roof deck (via 10),
a first arm (3),
wherein the first arm extends from the base plate (as shown), and
a second arm (supporting member 11),
wherein the second arm extends from the first arm (as shown),
Should there be disagreement as to whether Hubschmitt specifically discloses a roof deck, Davies discloses a similar support system that incorporates a plurality of brackets installed on a roof deck (as shown generally in Fig. 1). Regarding the roof deck, the examiner takes Official notice that use of the bracket in Hubschmitt would clearly be used with a roof deck, as the title and disclosure of the patent indicate use with a roof. Further, regarding having a plurality of brackets, Davies discloses multiple brackets used (see Fig. 1, generally). It would have been obvious at the time of filing to a person having ordinary skill in the art as a matter of duplication of parts to have this limitation because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). See MPEP §2144.04. The examiner takes the position that one having ordinary skill in the art would use as many brackets as necessary based on the article being supported.
The result of the obvious modification of the prior art provides wherein the plurality of storage brackets includes a first storage bracket and a second storage bracket (as rendered obvious by Davies),
wherein the first storage bracket is spaced apart from the second storage bracket (as shown); and
at least one roofing material (11, using the broadest reasonable interpretation in light of the disclosure provided)),
wherein the first storage bracket and the second storage bracket receive at least one roofing material (11), such that the at least one roofing material is positioned on the base plate of the first storage bracket and the base plate of the second storage bracket (as shown, 11, is positioned at least in part on the base plate).
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,512,480 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Brinkman (U.S. Publication 2015/0204083 A1)
Fontaine (U.S. Publication 2012/0267594 A1); see Fig. 1
Terenzoni (U.S. Patent 6,045,102)
Franco et al. (U.S. Patent 5,318,148)
Violet (U.S. Patent 5,113,971)
Martens (U.S. Patent 1,646,923)
Schade (U.S. Patent 1,639,352)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/MATTHEW J KASZTEJNA/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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