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 .
Specification
The specification is objected to for failing to include Figure 13 in the “Brief Description of Drawings.”
Claim Objections
Claims 2-4 are dependent from claim 1 and the preambles should accordingly refer to “The mounting system…”
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 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,270,204. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite the same subject matter in broader terms.
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.
Claims 1, 2, 5, 6, 9, 12, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wiklund et al. (US 4,050,366), hereinafter referred to as Wiklund.
Regarding claim 1, Wiklund discloses a mounting system for mounting a screen assembly to a structure, the mounting system comprising:
an elongate rail (2) defining a longitudinal channel (hollow within 2; Fig 1) and a plurality of lateral slots (3), each slot being configured to receive and accommodate part of a flange (6) of a screening element (1) in the channel and in the slot (Figs 1 and 2); and
a locking pin (9) configured to be received in the channel (Fig 1) and to extend through an aperture (8) in the flange of the screening element (Fig 2) to lock the screening element in place in the slot (Figs 4-9).
Regarding claim 2, Wiklund discloses wherein the channel defines a circular profile, while the locking pin defines an elliptical profile (col 3, lines 14-42 and col 4, lines 6-23).
Regarding claim 5, Wiklund discloses a screen assembly kit comprising a plurality of ones of the screening element (1) and a plurality of ones of the mounting system of claim 1 (left and right; Fig 1).
Regarding claim 6, Wiklund discloses wherein the channel defines a circular profile, while the locking pin defines an elliptical profile (col 3, lines 14-42 and col 4, lines 6-23) and wherein flanges of the screening element define elliptical apertures.
Regarding claim 9, Wiklund discloses a screen assembly comprising:
a plurality of screen elements (1), each screen element defining an elongate panel and two or more mounting flanges (left and right flanges), each mounting flange defining two or more mounting apertures (Fig 2; apertures at 4 around 6 and holes 8) and each mounting flange being substantially similar to the other mounting flanges;
a plurality of rails (2), corresponding to the number of mounting apertures (2 rails correspond to two apertures at each flange) defined by each mounting flange, each rail (2) defining a longitudinal channel (hollow channel; Fig 1) and a plurality of lateral slots (3), each slot accommodating part of one of the mounting flanges of the screening elements (Fig 1); and
a plurality of locking pins (9), each locking pin being accommodated in the channel of one of the rails (2) and extending through the mounting apertures (8) of the mounting flanges accommodated in the slots (3).
Regarding claim 12, Wiklund discloses wherein the channel defines a circular profile, while the locking pin defines an elliptical profile (col 3, lines 14-42 and col 4, lines 6-23) and wherein flanges of the screening element define elliptical apertures.
Regarding claim 18, Wiklund discloses the angle of the screening element is defined between a first direction normal to the first portion and a second direction normal to the second portion, is between 60 degrees and 160 degrees (Fig 4).
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 (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 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.
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wiklund, as applied in claims 1 and 9 above, in further view of Ado Metal (DE 9201338).
Regarding claims 4 and 11, although Wiklund teaches rails, Wiklund fails to teach a slide nut plate configured to be received in a track defined by the rail, and configured to be mechanically fastened to a structure to mount the rail to the structure while allowing longitudinal movement of the rail relative to the structure by allowing the slide nut plate to slide along the track. However, Ado Metal teaches a slide nut plate (20) accommodated in a track defined by at least one of the rails (Fig 10), and configured to be mechanically fastened to a structure to mount the rail to the structure while allowing longitudinal movement of the rail relative to the structure by allowing the slide nut plate to slide along the track. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Wiklund such that the rails are provided with the slide nut plates of Ado Metal since it would allow for longitudinal movement. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wiklund, as applied in claim 9 above, in further view of Zhuhai (CN 204960177).
Regarding claim 15, Wiklund teaches wherein at least one of the screening elements, comprises: an elongate panel defining a first portion and a second portion angled relative to the first portion (Fig 4). Wiklund fails to teach at least one solar panel connected to the first portion of the elongate panel. However, Zhuhai teaches that it is known for a screen assembly to include first and second portions with at least one solar panel (Figs 1, 2, 4 and paragraph 21) connected to the first portion of the elongate panel. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to provide the screening elements of Wiklund with solar panels, as taught by Zhuhai, since it is a known technique for improving screen assemblies and providing solar energy collection means. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claims 16 and 17, Wiklund discloses the second portion includes a solid portion but fails to teach that it defines an array of apertures wherein an open area defined by the array of apertures accounts for at least 30% of a total area of the second portion including the solid portion and open area. However, Zhuhai teaches that it is known for the second portion of a screening element have an array of apertures wherein an open area defined by the array of apertures accounts for at least 30% of a total area of the second portion including the solid portion and open area (Fig 2). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to modify Wiklund such that it is provided with the screening elements of Zhuhai and has an array of apertures wherein an open area defined by the array of apertures accounts for at least 30% of a total area of the second portion including the solid portion and open area in order to provide ventilation. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
Claims 15, 19, and 20 rejected under 35 U.S.C. 103 as being unpatentable over Wiklund, as applied in claim 9 above, in further view of Alesi (WO 2011/154787).
Regarding claims 15, 19, and 20, Wiklund teaches wherein at least one of the screening elements, comprises: an elongate panel defining a first portion and a second portion angled relative to the first portion (Fig 4). Wiklund fails to teach at least one solar panel connected to the first portion of the elongate panel. However, Alesi teaches that it is known for a screen assembly to include first and second portions with at least one solar panel (page 7 lines 4-5) connected to the first portion of the elongate panel. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to provide the screening elements of Wiklund with solar panels, as taught by Alesi, since it is a known technique for improving screen assemblies and providing solar energy collection means. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. As modified, the at least one solar panel covers substantially the entirety of an upper face of the first portion and the at least one solar panel covers between about 50% and about 95% of an upper face of the first portion.
Allowable Subject Matter
Claims 3, 7, 8, 10, 13, and 14 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Johnnie A. Shablack whose telephone number is (571)270-5344. The examiner can normally be reached Mon-Thu 6am-3pm EST, alternate Friday.
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/Johnnie A. Shablack/Primary Examiner, Art Unit 3634
Prosecution Insights