DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-24 are pending.Claims 25-43 are cancelled.
Drawings
Figures 1, 1A-A and 1B-B should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
Claim 4: The longitudinal engagement slots, leg, and corner key.
Claim 9: The at least one retainer.
Claim 10: The at least one retainer.
Claim 11: The means for sealing.
Claim 12: The means for sealing.
Claim 17: The means for attaching.
Claim 18: The means for attaching.
Claim 19: The means for attaching.
Claim 23: The means for attaching, being a flexible attachment system.
Claim 24: The intermediate framing members and means for attaching.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that uses the word “means,” and is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: Means for sealing in claims 11-12. The “means for sealing” in claim 13 is not interpreted under 35 USC 112f, as the claim identifies corresponding structure therein. “Means for attaching” in claims 17-19 and 23.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification identifies the means for sealing as air sealing gaskets, such as 240a/b. The specification identifies the means for attaching as recloseable mounting strips.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2-24 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.
Re claims 2-24, each recites, “the system” in line 1. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to recite, “the breathable system” and will be interpreted as such.
Re claim 2, claim 2 recites, “the edge” in line 3. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to recite, “an edge” and will be interpreted as such.
Re claim 24, claim 24 recites, “the system” in the last line. There is insufficient antecedent basis for these limitations in the claims. It appears this language is intended to recite, “the breathable system” and will be interpreted as such.
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, 5-7, 9-12, 14-16, 22 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Tarpio (EP2873797).
Re claim 1, Tarpio discloses a breathable system (Fig. 3a, 14) for retrofitting an existing window (18a; 14 is capable of retrofitting an existing window, as this is a statement of intended use), comprising:
a secondary infill glazing panel (17a) adapted to be positioned adjacent to (Fig. 3a) an existing glazing panel (18a) to form an interior cavity (22) between the existing glazing panel (18a) and the secondary glazing panel (17a),
a frame (17; 13; 4) enclosing exterior edges (Fig. 3a) of the secondary infill panel (17a), and
at least one air permeable filter (10; [0023]) coupled to (Fig. 3a) the frame (17a) adapted to allow an air flow ([0023]; F1) between the interior cavity (22) and an exterior space (21) adjacent to (Fig. 3a) the secondary glazing panel (17a).
Re claim 2, Tarpio discloses the system of claim 1, wherein the frame (17) comprises a plurality of frame members (13, 17) forming a U-shaped retaining slot (the slot in 17 which receives 17a) for retaining a perimeter portion (of 17a) of the edge (of 17) of the secondary infill panel (17a).
Re claim 3, Tarpio discloses the system of claim 1, wherein a dimension (Fig. 3a) of the frame (17) is sized to allow the air flow (F1) from the interior cavity (22) through ([0023]; in addition, this being a statement of intended use) the at least one air permeable filter (10) to the exterior air space (21).
Re claim 5, Tarpio discloses the system of claim 1, further comprising a second air permeable filter (11; 26) coupled to the frame (17) to allow a second air flow ([0020]) between (Fig. 3a) the interior cavity (22) and the exterior space (21) adjacent to (Fig. 3a; Fig. 11) the secondary glazing panel (17a).
Re claim 6, Tarpio discloses the system of claim 1, wherein the at least one air permeable filter (17) is positioned through (Fig. 2a) the frame (4, of 17 and 4).
Re claim 7, Tarpio discloses the system of claim 1, wherein the at least one air permeable filter (10) is positioned in proximity with (Fig. 3a) a bottom (bottom of 17) of the frame (17) and a second air permeable filter (11; 26) is positioned in proximity with (Fig. 3a, Fig. 11) a top (top of 17) of the frame (17).
Re claim 9, Tarpio discloses the system of claim 1, further comprising at least one retainer (19) coupled to an existing window frame element (13) which partially retains (Fig. 3a) at least one frame member (17) of the frame (17).
Re claim 10, Tarpio discloses the system of claim 1, further comprising at least one retainer (19; 25) coupled to an existing window frame element (13) enclosing (within 22) the at least one air permeable filter (10) and a portion (right portion of 17) of the frame (17).
Re claim 11, Tarpio discloses the system of claim 1, further comprising a means for sealing (25) at least one air gap (at 25) between existing window frame elements (13) and the frame (portion 13) so that the air flow (F1) occurs through the at least one air permeable filter (10).
Re claim 12, Tarpio discloses the system of claim 1, further comprising a means for sealing (25; 7) at least one air gap (at 25; at 7) between the existing glazing panel (18a) and the secondary glazing panel (17a) so that the air flow (F1) occurs through the at least one air permeable filter (11; 26).
Re claim 14, Tarpio discloses the system of claim 1, further comprising a sealing gasket (25) coupled to a frame member (13) adapted to form a seal (Fig. 3a) between the frame member (13) and a corner (of 18) of an existing window frame element (18).
Re claim 15, Tarpio discloses the system of claim 1, wherein at least one frame member (18) defines a perimeter slot (L-shaped slot of Fig. 3a) for coupling to a cosmetic gasket (25).
In addition, any gasket may be considered a “cosmetic” gasket, and it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. MPEP 2144.04 (I).
Re claim 16, Tarpio discloses the system of claim 1, wherein at least one frame member (18) defines a perimeter slot (L-shaped slot of Fig. 3a) for coupling to a sealing gasket (25).
Re claim 22, Tarpio discloses the system of claim 1, further comprising a means for attaching (25) the frame (portion 13) to existing window frame elements (18), wherein the means for attaching (25) is a gasket ([0022]) positioned around a perimeter of the frame (portion 13) and sized to create a frictional retainage between (Fig. 3a) the frame (13) and surrounding existing window elements (of 18).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarpio (EP2873797) in view of Frank et al (“Frank”) (US 2018/0252021).
Re claim 4, Tarpio discloses the system of claim 1, but fails to disclose wherein the frame comprises a plurality of frame members each having longitudinal engagement slots to receive a leg of a corner key which is used to partially join the frame members together to form the frame.
However, Frank discloses wherein the frame (8) comprises a plurality of frame members (1) each having longitudinal engagement slots (5) to receive a leg (31/32) of a corner key (I) which is used to partially join (Fig. 3) the frame members (1) together to form the frame (8).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio wherein the frame comprises a plurality of frame members each having longitudinal engagement slots to receive a leg of a corner key which is used to partially join the frame members together to form the frame as disclosed by Frank in order to provide tool-less securement of a perimeter frame, and to aid in alignment of the frame members during assembly.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarpio (EP2873797) in view of Costley (US 3,343,475).
Re claim 8, Tarpio discloses the system of claim 1, and a second air permeable filter (11; 26) is coupled to a header element (17, see Fig. 3a) of the frame (17), but fails to disclose wherein the at least one air permeable filter is coupled to a sill element of the frame.
However, Costley discloses wherein the at least one air permeable filter (50) is coupled to (Fig. 1-2) a sill element (12) of the frame (Fig. 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio wherein the at least one air permeable filter is coupled to a sill element of the frame as disclosed by Costley in order to provide additional ventilation by including more ventilation at the bottom of the window frame in addition to that disposed at the top thereof.
Claim(s) 13, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarpio (EP2873797) in view of Reyher et al (“Reyher”) (US 2014/0157696).
Re claim 13, Tarpio discloses the system of claim 12, but fails to disclose wherein the means for sealing is a gasket coupled to an indent defined in an outside facing surface of the frame.
However, Reyher discloses wherein the means for sealing (209) is a gasket (209) coupled to an indent (Fig. 4, on 200 which receives 209) defined in an outside facing surface (right side of 200) of the frame (200).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio wherein the means for sealing is a gasket coupled to an indent defined in an outside facing surface of the frame as disclosed by Reyher in order to provide tool-less securement to a perimeter frame, and to aid in alignment of the sealing member during assembly.
Re claim 23, Tarpio discloses the system of claim 1, comprising a means for attaching (25) the frame (portion 13) to existing window frame elements (18) or an existing glazing panel (18a) wherein the means for attaching (25) is an attachment system (25) which does not limit thermal expansion of separate members of the system (Fig. 3a), but fails to disclose the attachment system as a flexible attachment system.
However, Reyher discloses the attachment system (109) as a flexible attachment system ([0044] disclosing 109 as compressible).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio with the attachment system as a flexible attachment system as disclosed by Reyher in order to ensure a tight seal using compression ([0044]).
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarpio (EP2873797) in view of Peterson, III (“Peterson”) (US 4,068,428).
Re claim 17, Tarpio discloses the system of claim 1, but fails to disclose further comprising a means for attaching to an existing element which is positioned on an exterior facing surface of at least one frame member and adapted to adhere to an interior facing surface of an existing window frame.
However, Peterson discloses further comprising a means for attaching (12) to an existing element (10) which is positioned on an exterior facing surface (Fig. 3) of at least one frame member (18) and adapted to adhere to (Abstract) an interior facing surface (of 18) of an existing window frame (18).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio further comprising a means for attaching to an existing element which is positioned on an exterior facing surface of at least one frame member and adapted to adhere to an interior facing surface of an existing window frame as disclosed by Peterson in order to releasably, non-permanently attach the components together.
Re claim 18, Tarpio discloses the system of claim 1, but fails to disclose further comprising a means for attaching to an existing element which is positioned on an exterior facing surface of at least one frame member and the means for attaching is adapted to adhere to an interior facing surface of an existing infill panel.
However, Peterson discloses further comprising a means for attaching (12) to an existing element (10) which is positioned on an exterior facing surface (Fig. 3) of at least one frame member (18) and the means for attaching (12) is adapted to adhere to (Abstract) an interior facing surface (of 18) of an existing infill panel (18).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio further comprising a means for attaching to an existing element which is positioned on an exterior facing surface of at least one frame member and the means for attaching is adapted to adhere to an interior facing surface of an existing infill panel as disclosed by Peterson in order to releasably, non-permanently attach the components together.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarpio (EP2873797) in view of Wexler (US 2015/0068140).
Re claim 19, Tarpio discloses the system of claim 1, but fails to disclose further comprising a means for attaching to an existing element which is positioned on an exterior facing surface of at least one polymeric spacer coupled to an exterior facing surface of a frame member and the means for attaching is adapted to adhere to an interior facing surface of an existing infill panel.
However, Wexler discloses further comprising a means for attaching (Fig. 9A; 246/248) to an existing element (240) which is positioned on an exterior facing surface (of 242) of at least one spacer (242) coupled to an exterior facing surface (of 240) of a frame member (any frame member of Fig. 2, as coupled to is extremely broad) and the means for attaching (246/248) is adapted to adhere to an interior facing surface (of 244) of an existing infill panel (244).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio further comprising a means for attaching to an existing element which is positioned on an exterior facing surface of at least one polymeric spacer coupled to an exterior facing surface of a frame member and the means for attaching is adapted to adhere to an interior facing surface of an existing infill panel as disclosed by Wexler in order to fasten yet determine the appropriate distance between elements ([0098]).
In addition, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio as modified such that the spacer is polymeric in order to utilize inexpensive, readily available, easily formable materials. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 20, Tarpio as modified discloses the system of claim 17, Wexler discloses wherein the means for attaching (246/248) is a pair of reclosable mounting strips (246/248 being hook-and-loop) where one mounting strip (246) is coupled to the exterior facing surface (of 240) of the frame (per the above) and a matching mounting strip (248) is coupled to (Fig. 9A) the interior facing surface (of 244) of an existing window (244).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tarpio (EP2873797) in view of Kelley (US 2011/0047875).
Re claim 24, Tarpio discloses the system of claim 1, but fails to further comprising intermediate framing members positioned in proximity to a perimeter of the existing window and a means for attaching the frame to the intermediate framing members.
However, Kelley discloses further comprising intermediate framing members (94) positioned in proximity to a perimeter (Fig. 9) of the existing window (of 92) and a means for attaching (at 931, the clips) the frame (92) to the intermediate framing members (94).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Tarpio further comprising intermediate framing members positioned in proximity to a perimeter of the existing window and a means for attaching the frame to the intermediate framing members as disclosed by Kelley in order to releasably, non-permanently and tool-lessly attach the components together.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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, Brian Mattei can be reached at (571)270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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