DETAILED ACTION
This non-final Office action is in response to the claims filed on January 31, 2025.
Status of claims: claims 1-21 are hereby examined below.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 19, 2025 was considered by the examiner.
Drawings
The drawings are objected to because: “the sheet material portion is folded within the housing when in the retracted configuration in a corrugated manner” recited in claim 15 isn’t illustrated in the figures.
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 Objections
Claims 1-21 are objected to because of the following informalities:
Claim 1, line 4 – shouldn’t “the housing unit” be amended to “the housing”
Claim 1, line 5 – shouldn’t “position” be amended to “a position”
Claim 1, line 5 – shouldn’t “the said” be amended to “said”
Claim 1, line 6 – shouldn’t “the said” be amended to “said”
Claim 1, line 7 – shouldn’t “a building” be amended to “the building”
Claims 2-19, line 1 – shouldn’t “A blind” be amended to “The blind”
Claims 2-19, line 1 – shouldn’t a comma come after “claim #”
Claim 3, line 1 – shouldn’t “the said” be amended to “said”
Claim 3, line 3 – shouldn’t “the location” be amended to “a location”
Claim 4, line 3 – shouldn’t “the said” be amended to “said”
Claim 4, line 2 – “so close the same” is awkward and should be revised
Claim 8, line 2 – shouldn’t “same” be amended to “sealing member”
Claim 8, line 2 – “and so is tamper evident” is awkward; perhaps delete
Claim 9, line 2 – shouldn’t “the user” be amended to “a user”
Claim 10, lines 1-2 – shouldn’t “sealing means” be amended to “the sealing means”
Claim 11, line 3 – shouldn’t “same” be amended to “flange member”
Claim 11 line 3 – shouldn’t “the face” be amended to “a face”
Claim 11, lines 3 and 4 – “in use” is awkward; perhaps delete
Claim 12, line 1 – shouldn’t “the said” be amended to “said”
Claim 12, line 2 – shouldn’t “the said” be amended to “said”
Claim 12, line 3 – shouldn’t “same” be amended to “blind assembly”
Claim 13, line 1 – shouldn’t “the said” be amended to “said”
Claim 13, line 3 – shouldn’t “sheet material” be amended to “sheet material portion”
Claim 16, line 2 – shouldn’t “motorized” be amended to “motorized”
Claim 17, line 2 – shouldn’t “same” be amended to “battery”
Claim 19, line 1 – shouldn’t “utilised” be amended to “utilized”
Claim 20, line 3 – shouldn’t “the said” be amended to “said” (note this is recited twice in line 3)
Claim 20, line 6 - shouldn’t “the said” be amended to “said”
Claim 20, line 6 – shouldn’t “same” be amended to “sheet material portion”
Claim 21, line 1 – shouldn’t “A method” be amended to “The method”
Claim 21, line 1 – shouldn’t a comma come after “claim 20”
Appropriate correction is required.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are: “the blind assembly is utilised as a means to allow selective masking of the passage of light through a window with respect to which the blind assembly is adjacently installed,” in claim 19.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claim 15 is 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 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.
More specifically, “wherein the sheet material portion is folded within the housing when in the retracted configuration in a corrugated manner and is acted upon by the actuation means to unfold and fold the same as the sheet material portion is moved to the extended configuration and to the retracted configuration respectively” 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.
Additionally, note that claim 15 depends off of claim 13. Claim 13 recites “a spindle around which the sheet material portion is rolled when in the retracted configuration” and claim 15 recites “wherein the sheet material portion is folded within the housing when in the retracted configuration in a corrugated manner.”
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 3 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.
More specifically, it is unclear what exactly constitutes “factory conditions” and “installed in that format.” Furthermore, it is unclear whether the applicant is attempting to recite a product by process / method claim. The examiner has interpreted claim 3 as an apparatus claim, however appropriate revisions are required.
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 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.
Claims 1-8, 12-14, 16, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20210330837 to Hebeisen et al. (hereinafter “Hebeisen”).
Hebeisen discloses a blind assembly including: a housing 100; a sheet material portion 115 located within the housing along with an actuation means (spindle; see annotated figure below) which is configured to be used to selectively deploy the sheet material portion between retracted and extended positions and intermediate positions through an opening of the housing unit; a mounting means (see annotated figure below) to allow the blind assembly to be installed in position with a ceiling and/or wall of a building and wherein the said sheet material portion is retained within the said housing during said installation of the blind assembly at the ceiling and/or wall of a building.
Note, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.” (See MPEP 2113 – Product by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps).
Thus, note that claim 1 does not require “the said sheet material portion is retained within the said housing during said installation of the blind assembly at the ceiling and/or wall of a building,” but only that the structure be capable of made where “the said sheet material portion is retained within the said housing during said installation of the blind assembly at the ceiling and/or wall of a building,” as recited. And in this case, the Hebeisen blind assembly is capable of being manufactured and installed such that “the said sheet material portion is retained within the said housing during said installation of the blind assembly at the ceiling and/or wall of a building.”
Note: actuation means has been interpreted as a proper invocation of 35 UC 112(f)
Note: mounting means has been interpreted as a proper invocation of 35 UC 112(f)
(claim 1)
[AltContent: textbox (Mounting means)]
[AltContent: textbox (Housing)][AltContent: arrow]
[AltContent: textbox (Locating means)][AltContent: textbox (Flange member)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Sealing means / sealing member)][AltContent: textbox (Opening)][AltContent: arrow][AltContent: textbox (Actuating means)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Sheet material portion)][AltContent: arrow][AltContent: arrow]
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Hebeisen further discloses wherein a sealing means 250 (see annotated figure above) is provided across at least a portion of the opening after the blind assembly has been formed so as to retain the sheet material portion in the housing. (see claim 1 rejection above regarding product by process claim limitations) Note: sealing means has been interpreted as a proper invocation of 35 UC 112(f) (claim 2)
Hebeisen further discloses wherein the said blind assembly is formed under factory conditions and the sealing means are applied and the apparatus is then transported to the location of installation and installed in that format. (see claim 1 rejection above regarding product by process claim limitations) (claim 3)
Hebeisen further discloses wherein the sealing means substantially seals the opening and so closes the same to protect the sheet material portion from the ingress of dust, debris and liquid into the interior of the said housing in which the sheet material portion is located. (see annotated figure above) (claim 4)
Hebeisen further discloses wherein the sealing means seals the opening of the housing to encapsulate at least the sheet material portion within the housing. (see annotated figure above) (claim 5)
Hebeisen further discloses wherein the sealing means includes a sealing member adhered to the housing. (see annotated figure above) (claim 6)
Hebeisen further discloses wherein the sealing means is a member located with the housing by a frangible connection which can be broken to remove the sealing means and allow movement of the sheet material portion through the opening. (Note: sealing means may be formed as “rigid seals” and the housing “may be comprised of a aluminum or non-metallic material;” see [0026] and [0048]. Therefore, since the sealing means is rigid and so is the housing, the examiner has interpreted that the sealing means and housing are located at a “frangible connection,” as recited.) (claim 7)
Hebeisen further discloses wherein the sealing member cannot be relocated with the housing once the same has been removed therefrom and so is tamper evident. (Note, since the sealing member and housing are located at a frangible connection, it is inevitable that “the sealing member cannot be relocated with the housing once the same has been removed therefrom and so is tamper evident,” as recited.) (claim 8)
Hebeisen further discloses wherein the said sheet material portion is provided in the retracted configuration within the housing until the said sealing means is removed once the blind assembly and/or building in which the same is installed, is ready for use. (see claim 1 rejection above regarding product by process claim recitations) (claim 12)
Hebeisen further discloses wherein the said actuation means includes a spindle (see annotated figure above) around which the sheet material portion is rolled when in the retracted configuration and from which the sheet material is progressively unwound as it is moved to the extended configuration and wound as the sheet material portion is moved to the retracted configuration by rotation of the spindle. (claim 13)
Hebeisen further discloses wherein the spindle is mounted with respect to the housing and is rotatable with respect to the housing. (see annotated figure above) (claim 14)
Hebeisen further discloses wherein the actuation means includes a motorised mechanism electrically connected with a power source to cause movement of the mechanism and, in turn, the sheet material portion. (see at least the abstract; “motor” and [0024], “power plug”) (claim 16)
Hebeisen further discloses wherein the housing includes a locating means for a curtain. (see annotated figure above) Note: “locating means” has been interpreted as a proper invocation of 35 USC 112(f) (claim 18)
Hebeisen further discloses wherein the blind assembly is utilised as a means to allow selective masking of the passage of light through a window with respect to which the blind assembly is adjacently installed. (Note: this recitation constitutes an intended use recitation.
It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. In other words, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.) (claim 19)
Claim Rejections - 35 USC § 103
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 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 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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hebeisen, as applied to claim 2 above, in view of US 8991468 to Bolton, III.
Hebeisen fails to disclose the sealing means includes a tab.
Bolton, III teaches of a member 30,40,41 with a tab 15 to enable the user to remove the member from a housing 12 by gripping the tab and then applying a force to remove the member from the housing.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a tab with the Hebeisen sealing means, as taught by Bolton, III with a reasonable expectation of success in order to facilitate movement and manipulation of the sealing means. (claim 9)
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Hebeisen, as applied to claim 2 above, in view of US 6137629 to Shopp.
Hebeisen discloses wherein the housing is provided with sealing means with the sheet material portion, but fails to also disclose at least one movable panel.
Shopp teaches of a housing with at least one movable panel 166 (see FIG. 3) configured such that the at least one movable panel can be moved to an access position.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the bottom panel of Hebeisen to the right of the sealing member (see annotated figure above) so that the bottom panel is a movable panel, as taught by Shopp, in order to allow for additional access to within the housing; thus facilitating with maintenance of the blind assembly. Furthermore, by combining Hebeisen with Shopp, Hebeisen, as applied above, further discloses that the movable panel is configured such that the sheet material portion is accessible when in the retracted configuration and when the at least one movable panel has been moved to an access position.
(Additionally, “the movable panel is configured such that the sheet material portion is accessible when in the retracted configuration and when the at least one movable panel has been moved to an access position” constitutes an intended use recitation.) (claim 10)
Hebeisen, as applied above, further discloses wherein the housing includes a flange member (see annotated figure above) configured such that the at least one movable panel and/or a wall panel may be located against the same in use such that the panel is substantially flush with the face of the housing in which the opening through which the sheet material portion is selectively deployable in use is located. (claim 11)
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hebeisen, as applied to claim 14 above, in view of GB 2600132 to Sundelin et al. (hereinafter “Sundelin”).
Hebeisen fails to disclose wherein the sheet material portion is folded within the housing.
Sundelin teaches of a sheet material portion 194 (see FIGS. 28,29) is folded within the housing 4 when in the retracted configuration in a corrugated manner and is acted upon by the actuation means 197 to unfold and fold the same as the sheet material portion is moved to the extended configuration and to the retracted configuration respectively.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the Hebeisen sheet material portion with a foldable into a corrugated manner member, as taught by Sundelin with a reasonable expectation of success for aesthetic reasons. (claim 15)
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Hebeisen, as applied to claim 16 above, in view of US 20180323628 to Hall et al. (hereinafter “Hall”).
Hebeisen discloses wherein the power source is a battery (see [0049]) but fails to disclose an electrical input port to allow the same to be selectively chargeable in situ.
Hall teaches of a power source is a battery 160 and includes an electrical input port 170 to allow the same to be selectively chargeable in situ. (see [0019] – [0023])
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hebeisen such that the battery can be charged via an electrical input port, as taught by Hall with a reasonable expectation of success in order to allow for easy recharging of the battery without having to remove the battery from the blind assembly. (claim 17)
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hebeisen in view of Shopp.
Hebeisen discloses a blind assembly with a housing, a sheet material portion and actuation means. (see annotated figure above under the rejection of claim 1) Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention for the Hebeisen blind assembly to inevitably disclose a method of installing a blind assembly, the method comprising the steps of locating a housing of the blind assembly with a wall and/or ceiling of a building and installing the assembly to the said wall and/or ceiling, wherein the said blind assembly is assembled prior to said installation by locating a sheet material portion of the blind assembly in a retracted configuration in engagement with actuation means located within the interior of said housing and retaining the same within the said housing during installation, and after said installation allowing said sheet material portion to be selectively deployable between a retracted configuration and an extended configuration through an opening of the housing.
Hebeisen fails to disclose installing the assembly via retaining means.
Shopp teaches of installing an assembly 12 via a retaining means 52. (see FIG. 3 and col. 5)
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Hebeisen with a retaining means, as taught by Shopp with a reasonable expectation of success in order to facilitate installation of the blind assembly to a wall or ceiling.
Note: retaining means has been interpreted as a proper invocation of 35 UC 112(f)
Note: actuation means has been interpreted as a proper invocation of 35 UC 112(f)
(claim 20)
Hebeisen, as applied above, inevitably further discloses the method further includes a step of applying a sealing means (see annotated figure under the rejection of claim 1 above) to seal the opening of the housing once the blind assembly is formed and so retain and seal the sheet material portion within the housing prior to installation and then removing the sealing means after installation to allow the sheet material portion to be moved through the opening. (claim 21)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCUS MENEZES whose telephone number is (571)272-5225. The examiner can normally be reached on M - F 7:30 -4 PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Daniel Cahn can be reached on 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Marcus Menezes/
Primary Examiner, Art Unit 3634
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