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 .
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 13, 19 and 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.
Claim 13 recites “the further” lacing antecedent basis.
Claims 19 and 20 recites “a flashing” lacking antecedent basis.
Claim Objections
Claim 9 is objected to. Claim 9 recites language to roof penetrating structures which are not claimed. The claims are drawn to a sub combination flashing member and not a combination flashing member and roof penetrating member. The claim will be examined as if drawn to the sub combination flashing.
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) 1-7, 9, 10, 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 4,621,466 to Sonneborn et al.
Regarding claim 1, Sonneborn discloses a flashing member comprising first engagement section (figs. 3-5: left side 4) capable of engaging a structure, a second engagement section (right side 4) capable of engaging another structure, a connecting section (26) between the engagement sections and defining a first plane, the is variable (as both 4 may slide inwards and outwards through attachment to 20), first and second protrusions (left and right 25) projecting away from the first plane and the engagement sections are flat and parallel to the plane.
Regarding claim 2, the engagement sections substantially coincide with the first plane.
Regarding claims 3 and 16, the protrusions (25) project perpendicularly away from the plane.
Regarding claims 4 and 17, the connecting section is two parts ( first, both 21 and second, both 5) that may slide in relation to the each other.
Regarding claim 5, a first part and second part (21, 5) are configured to engage each other to prevent coming apart.
Regarding claims 6 and 18, the first part (21) has two legs (flats at 21) forming pockets and the second part (5) has a leg (flat at 5) inside a pocket to allow for a telescopic joint (parts can move away and toward each other).
Regarding claim 7, the connecting section has a corrugated part (see bent portions throughout 26).
Regarding claim 9, a reception groove may be located in a roof structure.
Regarding claims 10, 19, 20, the flashing is located between roof penetrating structures (windows) as seen in fig. 7.
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) 8 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 4,621,466 to Sonneborn et al.
Regarding claim 8, Sonneborn discloses the protrusions (25) protrude from the connecting section (26) and the basic claim structure of the instant application but does not disclose specific dimensions. Applicant fails to show criticality for specifically claimed dimensions, therefore it would have been an obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sonneborn to use the dimensions such as specified in these claims as a design choice based upon the size of the structures to connect with.
Regarding claims 11-13, these are rejected for reasons cited in the rejections of claims 1 and 10. However, force applied to the protrusions to push outward (or inward to disengage) is not disclosed. However, the act of moving the protrusions (25) by force outward is possible since there is play in the structure of figs. 3-7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sonneborn by moving the flashing parts apart to make up for any building discrepancy between roof penetrations in order to provide a proper seal. The parts being slidable inward or outward.
Claim Objections
Claims 14 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art of record does not disclose the limitations of claims 14 and 15 in addition to the claims from which they depend from.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Basil Katcheves whose telephone number is (571)272-6846. The examiner can normally be reached Monday-Thursday, 8:00 am to 6:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached on (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/BASIL S KATCHEVES/Primary Examiner, Art Unit 3633
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