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 .
Status of Claims
Claims 1-20 are pending. Claims 1-10 are subject to examination in this Office action. Claims 11-20 are withdrawn (non-elected).
Election/Restrictions
Applicant’s election with traverse of Invention I (claims 1-10) in the reply filed on 5 August 2026 is acknowledged. In traversing the restriction requirement, Applicant appears to assert that Inventions I and II are substantially the same because they are linked by common process limitations recited therein. This argument is not found persuasive because the determination of patentability of product-by-process claims is based on the product itself. The patentability of a product does not depend on its method of production.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted to date are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
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.
Claims 2 and 4-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 2, the phrase “over 25 feet” is recited. This phrase renders the claim indefinite because no upper limit is provided. Clarification is therefore requested.
Regarding claim 4, the term “the weight” lacks proper antecedent basis.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as unpatentable over Safford (U.S. Patent Application Publication No. 2007/0094955), in view of Niehaus (U.S. Patent Application Publication No. 2016/0222653).
Regarding independent claim 1, Safford describes an aluminum mullion (i.e., mullion 110 may be fabricated from forged or extruded aluminum, ¶ [0029]) comprising:
a first end (i.e., mullion 110 having a first end 112; Fig. l);
a second end having a guide track (i.e., second end 116 having a guide track, guide channel 120; Fig. l);
a height (i.e., mullion body 110 has a height; Fig. 1 ); and
a mullion body positioned between the first end and the second end (Fig. l); and
wherein the aluminum mullion has a monolithic beam shape (monolithic beam shape, Fig. 1).
Safford does not appear to expressly describe that at least one portion of the mullion body is removed. As evidenced by Niehaus, it was old and well-known in the mullion art to remove at least one portion of a mullion body (i.e., removed portions or breakthroughs 80; Fig. 11). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to remove at least one portion of a mullion body with a reasonable expectation of success because it would provide a desired thermal break, as taught by Niehaus. Such combination of known prior art elements that merely yields predictable results would have been obvious to one skilled in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16.
Regarding the process limitation directed to “wherein the aluminum mullion is extruded by pushing semi-molten aluminum through a steel die under high pressure to create a monolithic beam shape and then at least one portion of the mullion body is removed by a castellation process,” please note that 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. 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Accordingly, Safford as modified by Niehaus results in the claimed invention.
Regarding claim 2, it would have also been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to dimension the aluminum mullion to have a vertical length of over 25 feet, since such a modification would involve a mere change in the size of a component (a change in size is generally recognized as being within the level of ordinary skill in the art).
Regarding claim 3, Niehaus describes wherein the at least one portion that is removed comprises a castellation height and a castellation width (removed portions, breakthroughs 80, have heights and widths; Fig. 11; ¶¶ [0050] and [0051]).
Regarding claim 4, Niehaus describes wherein the at least one portion that is removed creates a void space within the body to reduce the weight of the aluminum mullion (removed portions, breakthroughs 80, reduces weight, Fig. 11; ¶¶ [0050] and [0051]).
Regarding claim 5, Niehaus describes wherein the at least one portion that is removed comprises multiple removed portions along the height of the aluminum mullion (Fig. 11).
Regarding claim 6, Safford describes wherein the mullion body has a solid web (solid web, connecting portion 114; Fig. 1).
Regarding claim 7, Safford describes wherein the mullion body has a hollow web (hollow web 380; Fig. 3).
Regarding claim 8, Safford describes wherein the hollow web comprises a pair of parallel members with a gap between the parallel members (Fig. 3) to create a void cavity (230; Fig. 3).
Regarding claim 9, Niehaus describes wherein the portions are removed from a void cavity (breakthroughs 80 are removed from a void cavity defined by body 21; Fig. 11).
Regarding claim 10, Niehaus describes wherein the castellation width is a width between the first and second end of the aluminum mullion and the castellation height is a height between a top end and a bottom end of the aluminum mullion (see e.g., Figs. 11 and 13A-13D)
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Refer to the attached Form PTO-892.
Authorization for Email Communication – In the event Applicant wishes to communicate with the Examiner via electronic mail, written authorization should be provided in Applicant’s next response. See MPEP § 502.03. The following is a sample authorization form which may be used by Applicant:
Recognizing that Internet communications are not secure, we hereby authorize the USPTO to communicate with any authorized representative concerning any subject matter of this application by electronic mail. We understand that a copy of these communications will be made of record in the application file.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY MINTZ whose telephone number is (571)270-7327. The examiner can normally be reached on M-Th 0730 - 1630 EDT.
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 on 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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/RODNEY MINTZ/Primary Examiner, Art Unit 3635
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