DETAILED ACTION
This is a final Office Action on the merits for U.S. App. 18/970,263. Receipt of the amendments and arguments filed on 09/25/2026 is acknowledged.
Claims 1 and 3-8 are pending.
Claim 2 is cancelled.
Claims 1 and 3-8 are examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 5 defines the I-shaped clip as depicted in figure 2A; however, claim 1, from which claim 5 depends from, has been amended to define an air flow stoppage upon such a clip, where such an I-shaped clip has not been disclosed within the originally filed specification as comprising of such an air flow stoppage and also such an I-shaped clip is constructed so that such an air flow stoppage cannot be positioned upon the I-shaped clip as defined, thus defining new matter. Claim 6 is considered rejected under 35 U.S.C. 112(a) for depending upon claim 5.
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 5 and 6 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.
Claim 5 defines the I-shaped clip as depicted in figure 2A; however, claim 1, from which claim 5 depends from, has been amended to define an air flow stoppage upon such a clip, where such an I-shaped clip has not been disclosed within the originally filed specification as comprising of such an air flow stoppage and also such an I-shaped clip is constructed so that such an air flow stoppage cannot be positioned upon the I-shaped clip as defined, thus rendering the claim indefinite since one of ordinary skill in the art would not know what scope is covered by such a claim or how to form such an element as defined. For examining purposes and in light of the specification and drawings, claim 5 is considered to define the fixing clip comprises of two separate clips, where the clip defined in claim 5 with female and male members forming an I-shaped clip with features as defined. Furthermore, claim 6 is considered rejected under 35 U.S.C. 112(b) for depending upon claim 5.
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) 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi (U.S. Patent 8,646,237) in view of Lorentz (DE 20107556).
Regarding claim 1, Takagi discloses a fixing clip (#100) for fixing an insulating panel to a wall-surfaced panel (see figure 2, where such panels are not positively defined), the fixing clip comprising:
a fixing portion (#120) configured to be fixed onto the wall-surfaces panel (see figure 2);
a rise-up portion (#114) rising up from the fixing portion (see figure 1, where the clip #100 can be rotated counterclockwise 90 degrees so that the rise-up portion extends upwardly therefrom);
a holding portion (#110) bent from a tip end of the rise-up portion (the right tip end of figure 1);
a sealing portion (#130) at a tip end (the top end of figure 1) of the holding portion and tilted toward the fixing portion (see figure 1).
However, Takagi does not disclose an air flow stoppage formed slantingly outwards from the fixing portion and is provided at a coupling portion between the fixing portion and the rise-up portion as defined. However, it is highly well known in the art, as evidenced by Lorentz, that such fixing clips #1 used as trim for finishing material of an exterior wall and which are to form a channel for receipt of such exterior finishing material can comprise of a fixing portion #3 or #2 and an rise-up #5, where an air flow stoppage #6/7 is provided at the corner where the fixing portion and rise-up meet in order to form a compressible seal against a window or door frame #14. See figures 1 and 7. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the fixing clip of Takagi to comprise of an air flow stoppage positioned as defined, as taught in Lorentz, in order to properly seal and provide compression between the fixing clip and a window or door frame when positioned thereagainst to prevent water from penetrating therebetween.
Regarding claim 7, Takagi in view of Lorentz render obvious an insulating wall assembly comprising:
a plurality of wall-surfaces panels (Though Takagi discloses a single wall panel #400, it would have been obvious before the effective filing date of the claimed invention to have included a plurality of such wall panels within Takagi in order to complete a wall of specific dimensions or design and also since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179 (1969).);
a plurality of insulating panels (Takagi; #300) on the wall-surfaced panels in juxtaposition (see figure 5 of Takagi);
a plurality of J-shaped fixing clips, each of the J-shaped fixing clips being the fixing clip as explained above in the rejection of claim 1, the wall-surfaced panel of each of the J-shaped fixing clips being a respective one of the plurality of wall-surfaced panels and the insulating panels of each of the J-shaped fixing clips being a respective one of the plurality of insulating panels (see figure 2 of Takagi), and each of the J-shaped fixing clips having a J-shaped transverse cross-sectional shape (see figure 1 of Takagi) in which the rise-up portion is connected between one end of the fixing portion and one end of the holding portion in transverse cross section (see figure 1 of Takagi); and
at least one I-shaped fixing clip (Takagi; #250) comprising an additional fixing portion (Takagi; #271), an additional rise-up portion (Takagi; #292), an additional holding portion (Takagi; #260) and an additional sealing portion (Takagi; #280), the at least one I-shaped fixing clip having an I-shaped transverse cross-sectional shape (see figure 3B of Takagi) in which the rise-up portion is connected between a middle of the additional fixing portion and a middle of the additional holding portion in transverse cross section (see figure 5 of Takagi); wherein;
the at least one I-shaped fixing clip is between adjoining insulating panels of the plurality of insulating panels (see figure 5 of Takagi);
at least one of the J-shaped fixing clip is at an end surface of one of the plurality of insulating panel that is terminally disposed and has no adjoining insulating panel among the insulating panels (see figures 2 and 5 of Takagi);
an end surface of each of the plurality of insulating panels is inserted into a groove formed either by the fixing portion, the rise-up portion and the holding portion of one of the J-shaped fixing clips or by the additional fixing portion, the additional rise-up portion and the additional holding portion of the at least one I-shaped fixing clip (see figures 2 and 5 of Takagi);
the sealing portion of each of the J-shaped fixing clips contacts a respective one of the plurality of insulating panel (see figure 2 of Takagi);
the additional sealing portion contacts a respective one of the plurality of insulating panels (see figures 2 and 5 of Takagi); and
the air flow stoppage of each of the J-shaped fixing clips contacts a respective one of the plurality of wall surfaces panels (when Takagi is modified in view of Lorentz as explained above, the air flow stoppage would contact the wall surfaced panels at the window or door frame locations as taught in Lorentz).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Takagi in view of Lorentz, or in the alternative in view of Lorentz and Maziarz (U.S. Patent 11,180,922).
Regarding claim 3, Takagi in view of Lorentz render obvious the holding portion extends from the tip end of the rise-up portion and is tilted toward the fixing portion (see figure 1 of Takagi, where the holding portion #110 extends from the right, tip end of the rise-up portion #114 and tilts at 90 degrees to the right side of the fixing portion #120). However, for compact prosecution purposes, if the Examiner is considered to over broadly interpret the “is tilted toward the fixing portion” limitations of claim 3, it is highly well known in the art, as evidenced by Maziarz, that a fixing clip #30 comprising of a fixing portion #32, rise-up portion #34, and holding portion #54 can extend such a holding portion so as to tilt towards the fixing portion front surface and thus allow compression against the panel inserted within the channel formed by the clip. See figure 3A and col. 7, ll. 20-26. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the holding portion of Takagi to tilt towards the front side of the fixing portion, as taught in Maziarz, in order to provide a bias and compress against the panel that is to be held therein during installation.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Takagi in view of Lorentz and Maziarz.
Regarding claim 4, Takagi in view of Lorentz renders obvious the claimed invention except specifically for the ratio between lengths a and b in Takagi is from 75% to 95%. Takagi does not specifically disclose such values for the lengths a and b. However, both Takagi and Maziarz disclose that such spacing values can vary depending upon each application, where Maziarz discloses that a gap #44 of 0.5 inches can be formed by the angle of the first wall portion #54 extending back 0.125 inches, and thus forming an 80% difference (0.5/.625) between the gap #44 and the largest distance between the fixing portion #32 and the holding portion #54. See col. 7, ll. 12-26. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the ratio for the lengths a and b in Takagi to between 75% and 95%, such as 80% as taught in Maziarz, in order to provide an appropriate gap and compression by the holding portion upon the panel to be inserted within such a channel formed by such elements of the clip.
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi in view of Lorentz and Labonte et al. (U.S. Patent 9,091,053).
Regarding claim 5 and in view of the 112 issues above, Takagi in view of Lorentz render obvious the fixing clip comprises a female member (Takagi; #270) and a male member (Takagi; #260); the female member includes a fixing portion (Takagi; #271) and a first rise-up portion (Takagi; #292) composed of two ribs (the left and right ribs of the portion #292 of figure 4 of Takagi) rising up from the fixing portion (see figure 4 of Takagi); the male member includes a second rise-up portion (Takagi; #294) between the two ribs of the first rise-up portion (see figure 3B of Takagi), the holding portion (the top substantially horizontal element of male member #260 of Takagi) formed extending from a tip end of the second rise-up portion (see figure 4 of Takagi) to opposed directions (see figure 4 of Takagi); the sealing portion (Takagi; #280) is at a tip end of the holding portion (see figure 4 of Takagi). However, Takagi does not disclose wherein tip ends of the two ribs of the first rise-up portion bend outwardly so as to form an opening. It is highly well known in the art, as evidenced by Labonte et al., that such female fixing clip members #104 can comprise of a fixing plate #119 with two ribs #116 forming a rise-up portion therefrom, where outer free ends of the ribs #116 are constructed to extend outwardly from the ribs in order make insertion of a male member #102 easier within an opening formed therebetween. See figures 16b and 16c. Therefore, it would have been obvious before the effective filing date of the claimed invention to have provided tip ends for the two ribs of the first rise-up portion of Takagi to comprise of outwardly bent tip ends, as taught in Labonte et al., in order to allow for easier insertion of the male member therein during installation.
Regarding claim 6, Takagi in view of Lorentz and Labonte et al. render obvious an inserting part of the first rise-up portion that receives the second rise-up portion includes a plurality of wedges (Takagi; #293) engaging the second rise-up portion (see figure 3B of Takagi), and each of the wedges has an isosceles triangular shape (Col. 6, ll. 18-21 of Takagi disclose the wedges #293 can take the form of triangular, saw-tooth forms, where figure 4 of Takagi depicts that such triangles can be isosceles in shape. However, if the Examiner is considered to over broadly interpret figure 4 of Takagi as comprising of isosceles triangles for such wedges #293, col. 6, ll. 18-21 of Takagi discloses that triangular and other suitable shapes can be used for such wedges and it would have been obvious before the effective filing date of the claimed invention to have constructed such wedges to be isosceles in shape in order to provide an appropriate amount of connection strength and surface area with the male portion and also since it has been held that changing the shape of an object is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed wedges was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Takagi in view of Lorentz and Labonte et al.
Regarding claim 8, Takagi in view of Lorentz render obvious the at least one I-shaped fixing clip comprises a female member (Takagi; #270) and a male member (Takagi; #260); the female member includes the fixing portion (Takagi; #271) and a first rise-up portion (Takagi; #292) composed of two ribs (the left and right ribs of element #292 of Takagi) rising up from the additional fixing portion (see figure 3B of Takagi); and the male member (Takagi; #260) includes a second rise-up portion (Takagi; #294) between the two ribs of the first rise-up portion (see figure 3B of Takagi), the additional holding portion (the top substantially horizontal portion #260 of figure 4 of Takagi) being bent from a tip end of the second rise-up portion (the top end of the second rise up of figure 4 of Takagi) and the additional sealing portion (Takagi; #280) being formed at a tip end of the holding portion (see figure 4 of Takagi) and being tilted toward the additional fixing portion (see figure 4 of Takagi, where the sealing portions #280 tilt at an oblique angle A2 toward the fixing portion #271); the additional rise-up portion comprises the first rise-up portion and the second rise-up portion (see figure 4 of Takagi). However, Takagi does not disclose wherein tip ends of the two ribs of the first rise-up portion are bent outward so as to form an opening. It is highly well known in the art, as evidenced by Labonte et al., that such female fixing clip members #104 can comprise of a fixing plate #119 with two ribs #116 forming a rise-up portion therefrom, where outer free ends of the ribs #116 are constructed to extend outwardly from the ribs in order make insertion of a male member #102 easier within an opening formed therebetween. See figures 16b and 16c. Therefore, it would have been obvious before the effective filing date of the claimed invention to have provided tip ends for the two ribs of the first rise-up portion of Takagi to comprise of outwardly bent tip ends, as taught in Labonte et al., in order to allow for easier insertion of the male member therein during installation.
Response to Arguments
Applicant's arguments filed 09/25/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that the pair of lips 6,7 of Lorentz are a suction device for temporarily holding a plastering stirp in position, not an air flow stoppage, Lorentz instead explicitly teaches that element #8 is the suction cup #8 which provides such a suction mounting. The lips #6 and #7 of Lorentz instead are located in order to provide the assembly with a springy and sealing effect after such a suction function is no longer needed and the profile is held in place due to the plaster resistance holding the clip in place. Takagi already teaches that such a clip can be attached with a fastener #1 through an aperture #125 of the fixing portion #120 and thus does not need such a temporary suction cup as taught in Lorentz. However, such a clip of Takagi would benefit from the use of such lips on the bottom of the rise-up portion in order to provide a seal and elastic expansion gap when such a clip is provided adjacent/against a window or door frame. Thus, it would have been obvious to apply such an air flow stoppage lip, as taught in Lorentz, upon the clip of Takagi in order to provide a seal and elastic expansion gap between the clip and a window or door frame of the wall panel assembly. The rejections are thus considered proper and are upheld.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the present case, Applicant argues features which Lorentz fails to disclose with respect to the claimed clip, when Lorentz was used for the obviousness of providing air flow stoppage lips on a bottom surface of such clips when placed against an attachment element/architectural opening frame #14 attached to a wall surface which the clip is attached to.
Regarding Applicant’s arguments that the Takagi clips are mounted to precast, tilt-up wall panels and does not disclose window or door frames so as to provide a reason for the modification as presented, such tilt-up wall panels are large pre-cast concrete panels, where when all four walls of a building are constructed from such panel types, such an assembly would require at least one opening to serve as the door/window for entry into the building after construction. Such openings would thus comprise of a frame in order to properly seal, seat, and attach a door or window thereto and thus although Takagi does not specifically disclose such openings within the wall panels, one of ordinary skill in the art would understand the necessary obvious steps and structures needed to form windows and doors within such wall panels as needed in the final product formed by such panels and thus benefit from the modified clip of Takagi in view of Lorentz so as to seal areas around such door and window openings. The rejections are thus considered proper and are upheld.
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 THEODORE V ADAMOS whose telephone number is (571)270-1166. The examiner can normally be reached Monday - Friday 9-5.
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635
