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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
130
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. 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.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0090], lines 12-13, the reference character 26’ was used to describe both the gaps/chambers and the panel.
Appropriate correction is required.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10, line 1, the recitation “claim 11” appears to be a typo since claim 10 cannot depend from claim 11 and appears should depend from claim 1.
Appropriate correction is required.
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.
Claim 14 is 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.
Regarding claim 14, the recitation of claim 14 contradicts the recitation of claim 13. Claim 14 appears to broaden claim 13.
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.
Claim(s) 1, 2, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,439,716 to Larsen.
Regarding claim 1, a method of preparing a spacer for an insulated glazing unit, comprising roll-forming a metal sheet into an elongate unit (Column 4, line 60 – Column 5, line 5) comprising: an elongate corrugated portion (18) comprising two or more longitudinal ridges (ridges, Fig.4); a first elongate lateral wall (20 on left), having a major planar portion (vertical portion of 20) and extending from a first major edge of the corrugated portion (19); a second lateral elongate wall (opposite 20), having a major planar portion (vertical portion) and extending from a second major edge of the corrugated portion (opposite 19) in the same direction as the first elongate wall; a first lip (58, Fig.6) extending from the first elongate lateral wall opposite the corrugated portion and extending towards the second elongate lateral wall; and a second lip (58) extending from the second elongate lateral wall opposite the corrugated portion and extending towards the first elongate lateral wall and defining a gap (between 58 and 58, Fig.6) between the first lip and the second lip; the corrugated portion comprising two or more longitudinal ridges (left and right ridge X, X, Fig.4), with a first lateral valley portion (left horizontal portion) between and connecting the first elongate lateral wall (20) and an adjacent ridge (19) and defining a first lateral valley (left horizontal portion), a second lateral valley portion (right horizontal portion) between and connecting the second elongate lateral wall (20 on right, Fig.4) and an adjacent ridge (right 19) and defining a second lateral valley (right horizontal), and one or more central valley portions (lower portions between 92 and X) between and connecting adjacent longitudinal ridges and defining one or more central valleys (lower portions between 92 and X), each ridge comprising a plurality of walls (sidewalls of each ridge), with peak portions connecting adjacent walls (92).
Regarding claim 2, further comprising forming corner clearances in the metal sheet or roll-formed spacer at corner locations in the metal sheet or spacer (lower corners of Fig.4 have clearances).
Regarding claim 5, further comprising applying one or more adhesives (38) to the exterior side of the longitudinal walls.
Regarding claim 7, further comprising bending the spacer into a spacer frame using one or more internal dies (102, Fig.10).
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.
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,439,716 to Larsen.
Regarding claim 6, Larsen discloses further comprising applying a desiccant matrix (42) to a central valley of the interior side of the formed spacer.
Larsen does not disclose no desiccant matrix applied to corner locations of the spacer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have reduced the amount of material needed to fill the spacer knowing that with less material/cost-saving leads to the spacer losing stiffness and strength of the metal spacer.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,439,716 to Larsen in view of US 9,428,953 B2 to Briese et al.
Regarding claim 3, Larsen does not disclose further comprising forming swaged ends in the metal sheet or roll-formed spacer.
Briese et al. discloses forming swaged ends (34) in the metal sheet or roll-formed spacer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have provided the ends of the spacer of Larsen with swaged ends as taught by Briese et al. so to enable the manufacture of the spacer to be completed without additional keys or inserts, thereby allowing the ends to nest within one another providing a completed frame.
Regarding claim 4, Larsen does not specifically disclose cutting the spacer into a single frame length after roll-forming the spacer.
Briese et al. disclose cutting (110) the spacer into a single frame length after roll-forming the spacer (Fig.2A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have cut the spacer frames to length post rolling so to enable multiple spacers to be rolled in one manufacturing step, thereby saving time and reducing costs of manufacture.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,439,716 to Larsen in view of US 2016/0108659 A1 to Stark et al.
Regarding claim 10, Larsen does not specifically disclose wherein the spacer is formed in a continuous, automated process in a single manufacturing line.
Stark discloses forming an evacuated glazing in an automated assembly (Paragraph [0119]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have formed the spacer of Larsen with a continuous, automated manufacturing process so to efficiently manufacture the spacers with a more precise and consistent output. Further, automated manufacturing lines can produce longer hours and increase productivity.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No.12,264,533. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims are included within the patented claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,859,439. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims are included within the patented claims.
Allowable Subject Matter
Claims 8 and 9 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.
Claims 11-20 are allowable pending the Double Patenting rejection and the rejections under 112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN D KWIECINSKI whose telephone number is (571)272-5160. The examiner can normally be reached Monday - Thursday from 8:30 am to 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at (571) 272-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RDK
/RYAN D KWIECINSKI/Primary Examiner, Art Unit 3635
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