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 .
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, 3-5, 8-11, 13-14 and 16-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,146,335 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both recite a portable structure comprising: a frame having two beams; a main panel connected to and extending between the beams; a solar shade panel positioned above the main panel by at least one inflatable beam attached to the underside of the solar shade panel, configured create a space between the solar shade panel and the main panel and a method for providing such a structure. It is noted that in view of claims 9 and 16, the reference patent inherently discloses a plurality of spaces since there can be at least two beams, which means there has to be a plurality of spaces on either side of both/any beams. Furthermore, regarding claims 19 and 23, have inflatable beams in a structure being interconnected so they can all be inflated by a single port in well-known in the art. Regarding claim 20, folding planar or deflated elements flat when not in use is a well-known means for compactly transporting shelters in the art. Regarding claims 21 and 22, it would have been obvious to install the main panel and the solar panel either simultaneously or separately depending on either they were permanently or releasably attached to each other.
Claims 1, 3-5, 8-11, 13-14 and 16-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,613,906 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both recite a portable structure comprising: a frame having two beams; a main panel connected to and extending between the beams; a solar shade panel positioned above the main panel by at least one inflatable beam attached to the underside of the solar shade panel, configured create a space between the solar shade panel and the main panel and a method for providing such a structure. It is noted that in view of claims 9-10 and 17, the reference patent inherently discloses a plurality of spaces since there can be at least two beams, which means there has to be a plurality of spaces on either side of both/any beams. Furthermore, regarding claims 19 and 23, have inflatable beams in a structure being interconnected so they can all be inflated by a single port in well-known in the art. Regarding claim 20, folding planar or deflated elements flat when not in use is a well-known means for compactly transporting shelters in the art. Regarding claims 21 and 22, it would have been obvious to install the main panel and the solar panel either simultaneously or separately depending on either they were permanently or releasably attached to each other.
Claims 1, 3-5, 8-11, 13-14 and 16-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,753,119 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both recite a portable structure comprising: a frame having two beams; a main panel connected to and extending between the beams; a solar shade panel positioned above the main panel by at least one inflatable beam attached to the underside of the solar shade panel, configured create a space between the solar shade panel and the main panel and a method for providing such a structure. It is noted that in view of claims 6-7, the reference patent inherently discloses a plurality of spaces since there can be at least two beams, which means there has to be a plurality of spaces on either side of both/any beams. Furthermore, regarding claims 19 and 23, have inflatable beams in a structure being interconnected so they can all be inflated by a single port in well-known in the art. Regarding claim 20, folding planar or deflated elements flat when not in use is a well-known means for compactly transporting shelters in the art. Regarding claims 21 and 22, it would have been obvious to install the main panel and the solar panel either simultaneously or separately depending on either they were permanently or releasably attached to each other.
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, 3-5, 8-10, 13-14, 16-18 and 21-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saiz et al. (US 2010/0200037 A1).
Claims 1 and 13: Saiz et al. discloses a portable structure system, comprising: a frame comprising at least two beams (3, 6); a main panel (65; FIGS. 5 or 6) configured to be connected to and extend between the at least two beams; and a solar shade configured to be installed above the main panel, comprising: at least one solar shade panel (64, as seen in FIG. 5) configured to be attached to and spaced above the main panel by a first attachment mechanism (69) extending along a first edge of the at least one solar shade panel and a second attachment mechanism (69) extending along a second edge of the at least one solar shade panel; and at least one inflatable beam (63) configured to be positioned between the main panel and the at least one solar shade panel, spaced between the first and second edges thereof (as seen in FIG. 5, each beam 63 is located inward from the edge of the solar shade which is connected to 70 via 69), wherein the at least one inflatable beam is inflatable to space the at least one solar shade panel above the main panel (as seen in the figures) and to create a plurality of spaces between the at least one solar shade panel and the main panel, on either side of the at least one inflatable beam (as seen in FIG. 5, there is a space between 64 and 65 to the left of 63 and a smaller, triangular-shaped space to the right of beam 63).
Regarding claim 13, since Saiz et al. discloses the portable structure system as having a solar shade panel above the main panel with at least one inflatable beam positioned therebetween, the steps to provide such an apparatus would inherently comprise positioning the frame on a surface and installing the solar shade and main panel on the frame.
Claim 3: Saiz et al. discloses the first and second attachment mechanisms as comprising a releasable hook and loop material, a lace-line, or a combination thereof, such that the solar shade is removable from the main panel; or stitching, welding, bonding, or a combination thereof, such that the solar shade is permanently attached to the main panel (welds 69 permanently attach both the main panel and the solar shade to element 70; paragraph 56).
Claim 4: Saiz et al. discloses at least one inflatable beam as comprising one or more tubular structures (as seen in FIGS. 1-2, there are two inflatable beams on each side of the panel defined by the main panel and the solar shade panel) inflatable with air or a gas to define the plurality of spaces on either side of the one or more tubular structures (as seen in FIGS. 1-2 and 5, there is a small space created by each inflatable beams and a large, shared space between the two beams 63).
Claim 5: Saiz et al. discloses the at least one inflatable beam as being configured to be releasably or permanently attached to an underside of the at least one solar shade panel, or wherein the at least one inflatable beam has an attachment mechanism configured to releasably or permanently attach the at least one inflatable beam to the main panel (as seen in FIG. 5, the solar shade panel 64 and the main panel 65 are both welded to 70 at points 69 and 70 is welded to 67, which contained the inflatable beam 63 at 68; therefore, the inflatable beam is permanently attached to the underside of the sola shade panel via 70 and permanently attached to the main panel also via 70).
Claim 8: Saiz et al. discloses the at least one inflatable beam as being configured to be attached to the main panel or to the at least one solar shade panel by a hook and loop material, a lace-line, stitching, welding, or bonding, or a combination thereof (as seen in FIG. 5, the solar shade panel 64 and the main panel 65 are both welded to 70 at points 69 and 70 is welded to 67, which contained the inflatable beam 63 at 68; therefore, the inflatable beam is permanently attached to the underside of the sola shade panel via 70 and permanently attached to the main panel also via 70).
Claim 9: Saiz et al. discloses the at least one inflatable beam as comprising at least two of said inflatable beams configured to be oriented substantially parallel to one another between the main panel and the at least one solar shade panel, spaced between the first and second edges thereof (as seen in FIGS. 1 and 2).
Claim 10: Saiz et al. discloses at least one solar shade panel as comprising a fabric material, or a mesh material, or a fabric or mesh material including a layer adapted to reflect solar radiation (64 and 65 are made from fabric; paragraphs 2, 14, 37).
Claims 14 and 18: Saiz et al. discloses a solar shade system for a portable structure, the solar shade system comprising: a solar shade panel (64) configured to be installed above a main panel (65) of the portable structure, the main panel extending between two beams (3, 6) of the portable structure, wherein the solar shade panel is configured to be attached to the main panel along a first edge and a second edge of the solar shade panel (as seen in FIGS. 1-2 and 5-6, each edge of 64 is attached to the main panel via 69/70); and at least one inflatable beam (63) configured to be positioned between the main panel and the solar shade panel, spaced between the first and second edges thereof (FIGS, 1-2 and 5-6); wherein the at least one inflatable beam is configured to space the solar shade panel above the main panel of the portable structure to create a plurality of spaces between the solar shade panel and the main panel, on either side of the at least one inflatable beam (as seen in FIG. 5, there is a space between 64 and 65 to the left of 63 and a smaller, triangular-shaped space to the right of beam 63); wherein the solar shade panel extends between the first edge and the second edge, and wherein the first edge and the second edge each has an attachment (69) configured to attach the solar shade panel to the main panel along the respective edge of the solar shade panel (via 70, as seen in FIG. 5).
Regarding claim 18, since Saiz et al. discloses the solar shade system as having a solar shade panel above the main panel with at least one inflatable beam positioned therebetween, the steps to provide such an apparatus would inherently comprise installing the solar shade panel above the main panel and inflating the at least one inflatable beam.
Claim 16: Saiz et al. discloses the attachments as comprising: a hook and loop material, a lace line, or a combination thereof, such that the solar shade panel is removable from the main panel; or stitching, welding, bonding, or a combination thereof, such that the solar shade panel is permanently attached to the main panel (welds 69 permanently attach both the main panel and the solar shade to element 70; paragraph 56).
Claim 17: Saiz et al. discloses the at least one inflatable beam as comprising two or more parallel tubular structures inflatable with air or a gas, and configured to be spaced from the first and second edges of the solar shade panel to define the plurality of spaces therebetween (as seen in FIGS. 1-2 and 5-6).
Claim 21: Saiz et al. discloses installing the solar shade panel and main panel as comprising simultaneously installing the solar shade panel and the at least one inflatable beam along with the main panel (since the solar panel and the main panel are welded together).
Claim 22: Saiz et al. discloses installing the solar shade panel and main panel as comprising installing the main panel on the frame and installing the solar shade panel over the main panel (both the main panel and the solar shade panel are installed when either cord 62 is placed in the passage in beam 3, or when zipper 71 is used to install them to the frame beam, wherein the solar shade panel is always installed over the main panel), with the at least one inflatable beam extending therebetween (as seen in the figures).
Claim 23: Saiz et al. discloses inflating each of the at least one inflatable beams with air or a gas via a single port (paragraph 51; each beam has a valve, or single port, used to inflate said beam), wherein the at least one solar shade panel is spaced above the main panel with the plurality of spaces therebetween (as seen in FIGS. 1-2 and 5-6).
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) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saiz et al. (US 2010/0200037 A1) alone.
Saiz et al. is discussed above and while Saiz et al. does not explicitly teach deflating the at least one inflatable beam and folding the main panel and the at least one solar panel flat, it would have been obvious to one of ordinary skill in the art to do since folding shade structures flat when not in use is old and well-known in the art to provide a compact way to transport the structure to different locations.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saiz et al. (US 2010/0200037 A1) as applied to claim 1 above, and further in view of Hotes (US 9,441,394 B1).
Saiz et al. is discussed above but is silent on the size of the space created by the inflatable beam between the solar shade panel and the main panel. Hotes discloses a solar fly for a shelter comprising a main panel (30), a solar shade panel (52) and beams/tubes (spacers 78; col. 4 lines 39-42) to create a space between the main panel and the solar shade panel, wherein the beams/tubes space the solar shade panel at least four inches above the main panel (col. 4, lines 46-47; if the spacers are 4-inch diameter tubing, there would be at least four inches between the solar shade and the main panel). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Saiz et al. to include a four inch space between the solar shade panel and the main panel, as taught by Hotes, so that a sufficient gap was created between the two that would provide good insulation to the shelter.
Saiz et al. also lacks spacing the at least one solar panel at least four inches or at least 10 centimeters above the main panel on both sides of the inflatable beam when inflated (as seen in FIG. 6, the spacing to the right of the inflatable beam is much smaller and not at least 4 inches or at least ten centimeters). Hotes discloses a solar fly for a shelter comprising a main panel (30), a solar shade panel (52) and beams/tubes (spacers 78; col. 4 lines 39-42) configured to be positioned between the main panel and the at least one solar shade panel, spaced between the first and second edges thereof, wherein the beams are used to space the at least one solar shade panel above the main panel and to create a plurality of spaces between the at least one solar shade panel and the main panel, on either side of the at least one beam (as seen in FIG. 3, there are a five sets of parallel wherein there is a plurality of spaces created between the sets of beams and the sets of beams and the edge of the solar panel). It would have been obvious to modify Saiz et al. to include at least one more inflatable beam between the two inflatable beams near the edges of the solar panel and main panel, as suggested by Hotes, to provide more structural rigidity to the middle of the panels created by the main panel and the solar panel between each two adjacent sets of frame beams to reduce the chance of sagging over time or during extreme forces that may be resting upon the top of the structure system.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saiz et al. (US 2010/0200037 A1) as applied to claims 14 above, and further in view of Mills (US 2011/0253184 A1).
Saiz et al. is discussed above but lacks the tubular structures being interconnected such that they are inflatable via a single port. Mills teaches a tent comprising a plurality of parallel tubular structures (14; FIG. 3), wherein the tubular structures are interconnected such that they are inflatable via a single port (18; paragraph 53). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Saiz et al. to include interconnected tubular structures inflated by a single port, as taught by Mills, so that the user only has to use one port to fill inflate the entire structure, thus saving time for having to fill and then subsequently deflate the structure through multiple ports.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Regarding the double patenting rejection, while the statutory double patent rejection has been withdrawn based on the amended claims, there are still three outstanding nonstatutory double patenting rejections for the ‘355, ‘906 and ‘119 patents. As stated in the rejection above, the newly added claims limitations were not sufficient to overcome the nonstatutory double patenting rejections since there reference patents all disclosed at least one inflatable beam (with some dependent claims even reciting “two or more inflatable beams”), thus meaning if there are multiple inflatable parallel beams, there inherently has to be spaces created between them and on either side of them. It is also noted that Applicant states that terminal disclaimers were submitted along with the response filed 12/29/2025; however, no terminal disclaimers were received.
Regarding the prior art, is it noted that the newly added limitations and general broadening of portions of the claims resulted in the application of the Saiz et al. reference reading on the amended claims, either alone or in combination with other prior art, as seen in the rejection above.
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 DANIELLE JACKSON whose telephone number is (571)272-2268. The examiner can normally be reached M-F: 11AM-7PM EST.
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, David Dunn can be reached at (571)272-6670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DNJ/Examiner, Art Unit 3636
/DAVID R DUNN/Supervisory Patent Examiner, Art Unit 3636