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 .
DETAILED ACTION
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) 15 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,779,206 to Harris et al. (Harris).
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Regarding Claim 15: Harris discloses a parapet bracket for hanging a pipe to a parapet of a roof, comprising: a long leg (See Annotated Fig. A) having a [coupling hole] (See Annotated Fig. A) the long leg configured to hang vertically along an interior surface of the parapet facing a roof deck of the roof; a first connecting plate (See Annotated Fig. A) orthogonally attached to the long leg and configured to lay horizontally on a top surface of the parapet, the first connecting plate having a first set of teeth structures (See Annotated Fig. A) extending along a length of the first connecting plate; a short leg (See Annotated Fig. A) being shorter than (See Annotated Fig. A) the long leg (See Annotated Fig. A) and configured to hang vertically along an exterior surface of the parapet that is opposite to the interior surface of the parapet; and a second connecting plate (See Annotated Fig. A) orthogonally attached to the short leg and configured to lay horizontally on the top surface of the parapet, the second connecting plate having a second set of teeth structures (See Annotated Fig. A) extending along (note: that the teeth have a longitudinal dimension that extends in the length direction) a length of the second connecting plate (See Annotated Fig. A), the second set of teeth structures (See Annotated Fig. A) configured to face the first set of teeth structures (See Annotated Fig. A) of the first connecting plate; wherein the first and second connecting plates (See Annotated Fig. A) are configured to move longitudinally relative to each other to define a bracket spacing between the long leg and the short leg, the bracket spacing being greater than or equal to a thickness of the parapet; wherein the first set of teeth structures (See Annotated Fig. A) are configured to engage the second set of teeth structures (See Annotated Fig. A) to keep the first and second connecting plates stationary relative to each other after creating the bracket spacing.
Harris discloses a single coupling hole but does not disclose a column of coupling holes. Nonetheless, it would have been obvious for a person of ordinary skill in the art to duplicate the essential working part of the coupling hole to provide a column of coupling holes. Here's why:
Courts have held that “mere duplication of parts has no patentable significance unless a new and unexpected result is produced.”1 Here, Harris discloses a single coupling hole (36). Duplicating the essential working part of the hole (36) to provide additional attachment points would provide variation, customization and adjustability to the user without producing any new and unexpected results. As such, it would have been obvious to a person of ordinary skill in the art at a time before the effective date of invention to duplicate the essential working hole such that there is a column of coupling holes for the reasons discussed herein.
Regarding Claim 18: Harris does not disclose a column of coupling holes but such a column would have been obvious for the reasons discussed above in the rejection of Claim 15. Moreover, Harris discloses a threaded hole (see nut 39). As such, Harris teaches wherein the column of coupling holes has threaded coupling holes.
Regarding Claim 19: Harris does not disclose that the bracket is made of stainless steel; however, it would have been obvious to a person of ordinary skill in the art and a time before the effective date of invention to make the bracket out of stainless steel. Courts have held that it is 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.2 Here, the intended use of the bracket is to hang an object from the bracket. A bracket made of stainless steel would be durable enough to support objects therefrom. In addition, stainless steel is well known and commercially available at a time before the effective date of the invention. Moreover, it is well-within the level of skill in the art to utilize the known and commercially available materials to produce a part suited for the intended use thereof. The use of stainless steel brackets would not produce any new unexpected results. Therefore, it would be obvious for a person skilled in the art at a time before the effective date of the instant invention to choose stainless steel to construct the bracket out of and doing so would enable the bracket to be durable and resistant to corrosion.
Regarding Claim 20: This claim includes language that defines the process by which the bracket (product) is made. Specifically, this claim recites “wherein the long leg is welded to the first connecting plate--.” Such language amounts to a product-by-process limitations, which are treated differently than structural limitations. The MPEP provides the following: “[E]ven 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. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (See MPEP Section 2113) Further, the MPEP states that "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." (See MPEP Section 2113)
Moreover, “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. (See MPEP 2113)
For the reasons set forth above, Examiner will analyze the patentability of the claims based on the product itself and not based on the stated process by which it is made.
Here, Harris discloses wherein the long leg (See Annotated Fig. A) is [coupled or integrally coupled] to the first connecting plate (See Annotated Fig. A) and the short leg (See Annotated Fig. A) is [coupled or integrally coupled] to the second connecting plate (See Annotated Fig. A).
Allowable Subject Matter
Claims 16 and 17 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.
Reasons for Allowable Subject Matter
None of the cited prior art, considered alone or in combination, discloses or teaches first and second pluralities of fastening holes along the respective first and second connecting plates.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In addition to the references used in this rejection and those cited in the PTO-892, the following references are very relevant to the claimed invention: US 3765633 7992833.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERET C MCNICHOLS whose telephone number is (571)270-7363. The examiner can normally be reached Monday - Friday: 9:00 - 5:00 (Eastern).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached at 571-272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ERET C. MCNICHOLS
Primary Examiner
Art Unit 3632
/ERET C MCNICHOLS/Primary Examiner, Art Unit 3632
1 See MPEP 2144.04(VI)(B).
2 See MPEP 2144.07.
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