DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-6, 8-13, and 15-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,291,910. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter found in claims 1-6, 8-13, and 15-19 of the instant application is found in claims 1-17 of U.S. Patent No. 12,291,910, and the few minor differences in terminology between the claims are not patentably distinct. The claims correspond as follows:
19/171,414
US 12,291,910
Claims
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7
n/a
8
7
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n/a
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n/a
Claim Rejections - 35 USC § 102
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 1-3, 5, 7-9, 11-12, 14-17, and 19-20 are rejected under 35 U.S.C. 102a1 as being anticipated by WO2012/014245.
Regarding claim 1, WO2012/014245 discloses an end cap for a single panel of a vertically stacking panel door (See at least Figures 14A-15), comprising: a body (element 2) to be coupled to an end of the single panel of the vertically stacking panel door; a first track wheel (Figures 14A-14C, upper element 7) coupled to the body; a second track wheel (Figures 14A-14C, lower element 7) coupled to the body; and a vertical stability roller (Figures 14A-14C, middle element 7) coupled to the body, wherein the first track wheel, the second track wheel, and the vertical stability roller are aligned along a vertical line (See Figures 14A-14C), wherein the first track wheel is located vertically above the second track wheel and the vertical stability roller is located between the first track wheel and the second track wheel.
Regarding claim 2, WO2012/014245 discloses wherein the end cap is coupled to a top most panel of the vertically stacking panel door (See Figures 1-15, all panels are uniform).
Regarding claim 3, WO2012/014245 discloses wherein the first track wheel and the second track wheel protrude away from the body at a same length (See Figure 14A, all element 7’s protrude a very small distance (i.e. “the same length”) from the surface of element 2).
Regarding claim 5, WO2012/014245 discloses wherein a distance between the vertical stability roller and the first track wheel is equal to a distance between a lower track portion and an upper track portion in a panel interface zone of the vertically stacking panel door. Examiner notes that the terms “a lower track portion” and “an upper track portion” and “a panel interface zone of the vertically stacking panel door” are not defined by the claim, and can be interpreted in an extremely broad manner. (i.e. “a lower track portion” and “an upper track portion” are considered to be “portions” of element 5 as shown in Figures 1-3, that are separated by a distance equal to “a distance between the vertical stability roller and the first track wheel”). Therefore, the panel system of WO2012/014245 is considered to satisfy the broad claim language “wherein a distance between the vertical stability roller and the first track wheel is equal to a distance between a lower track portion and an upper track portion in a panel interface zone of the vertically stacking panel door”.
Regarding claims 7, 14, and 20, WO2012/014245 discloses wherein the first track wheel, the second track wheel, and the vertical stability roller of the first end cap are aligned towards a center of the first end cap and the first track wheel, the second track wheel, and the vertical stability roller of the second end cap are aligned towards a center of the second end cap (See at least Figures 14A-14C, Examiner notes that upper, middle, and lower element 7 are “aligned towards a center” of element 2).
Regarding claim 8, WO2012/014245 discloses a top most single panel of a vertically stacking panel door system (See at least Figure 13, Examiner notes all panels in the system are uniform), comprising: a first end cap (Figures 14A-14C, element 2, See Figure 15 for element 2 located on both sides of panel) coupled to a first end of the top most panel; and a second end cap (Figures 14A-14C, element 2, See Figure 15 for element 2 located on both sides of panel) coupled to a second end of the top most panel, wherein the first end is opposite the second end, wherein each of the first end cap and the second end cap comprises: a first track wheel (Figures 14A-14C, upper element 7) coupled to a body; a second track wheel (Figures 14A-14C, lower element 7) coupled to the body; and a vertical stability roller (Figures 14A-14C, middle element 7) coupled to the body, wherein the first track wheel, the second track wheel, and the vertical stability roller are arranged along a vertical line, wherein the first track wheel is located vertically above the second track wheel and the vertical stability roller is located between the first track wheel and the second track wheel.
Regarding claim 9, WO2012/014245 discloses wherein the first track wheel and the second track wheel protrude away from the body at a same length for the first end cap and the second end cap (See Figure 14A, all element 7’s protrude a very small distance (i.e. “the same length”) from the surface of element 2).
Regarding claims 11, WO2012/014245 discloses wherein a distance between the vertical stability roller and the first track wheel is equal to a distance between a lower track portion and an upper track portion in a panel interface zone of the vertically stacking panel door for the first end cap and the second end cap. Examiner notes that the terms “a lower track portion and an upper track portion” and “a panel interface zone of the vertically stacking panel door” are not further limited by the claim, and can be interpreted in an extremely broad manner. (i.e. “a lower track portion” and “an upper track portion” are considered to be “portions” of element 2 as shown in Figures 14A-14C, that are separated by a distance equal to “a distance between the vertical stability roller and the first track wheel”). Therefore, the panel system of WO2012/014245 is considered to satisfy the broad claim language “wherein a distance between the vertical stability roller and the first track wheel is equal to a distance between a lower track portion and an upper track portion in a panel interface zone of the vertically stacking panel door”.
Regarding claim 12, WO2012/014245 discloses wherein the vertical stability roller of the first end cap and the second end cap is coupled to a separate body that is mechanically coupled to the body of the first end cap and the second end cap (Examiner notes that element 7a is “a separate body” with respect to element 7, and is “mechanically coupled” to element 2).
Regarding claim 15, WO2012/014245 discloses an end cap for a single panel of a vertically stacking panel door (See at least Figure 13, Examiner notes all panels in the system are uniform), comprising: a body (Figures 14A-14C, element 2, See Figure 15 for element 2 located on both sides of panel) to be coupled to an end of the single panel of the vertically stacking panel door; a first track wheel (Figures 14A-14C, upper element 7) coupled to the body; a second track wheel (Figures 14A-14C, lower element 7) coupled to the body; and a vertical stability roller (Figures 14A-14C, middle element 7) coupled to a vertical stability roller body (element 7a coupled to middle element 7), wherein the vertical stability roller body is coupled to the body such that the first track wheel, the second track wheel, and the vertical stability roller are arranged along a vertical line (See Figures 14A-14C), wherein the first track wheel is located vertically above the second track wheel and the vertical stability roller is located between the first track wheel and the second track wheel (See Figures 14A-14C).
Regarding claim 16, WO2012/014245 discloses wherein the end cap is coupled to a top most single panel of the vertically stacking panel door.
Regarding claim 17, WO2012/014245 discloses wherein the first track wheel and the second track wheel protrude away from the body by an equal amount (See Figures 14A-14C, Examiner notes that, as shown in Figure 14A, although upper-most and lower-most element 7 are offset with respect to each other due to the shape of element 2, they are considered to “protrude away from the body by an equal amount”).
Regarding claim 19, WO2012/014245 discloses wherein a distance between the vertical stability roller and the first track wheel is equal to a distance between a lower track portion and an upper track portion in a panel interface zone of the vertically stacking panel door. Examiner notes that the terms “a lower track portion and an upper track portion” and “a panel interface zone of the vertically stacking panel door” are not further limited by the claim, and can be interpreted in an extremely broad manner. (i.e. “a lower track portion” and “an upper track portion” are considered to be “portions” of element 5 as shown in Figures 1-3, that are separated by a distance equal to “a distance between the vertical stability roller and the first track wheel”). Therefore, the panel system of WO2012/014245 is considered to satisfy the broad claim language “wherein a distance between the vertical stability roller and the first track wheel is equal to a distance between a lower track portion and an upper track portion in a panel interface zone of the vertically stacking panel door”.
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.
Claims 4, 6, 10, 13, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over WO2012/014245.
Regarding claims 4, 10, and 18, although WO2012/014245 does not explicitly disclose wherein the vertical stability roller protrudes away from the body at a length that is shorter than a length at which the first track wheel and the second track wheel protrude away from the body, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the art in this way, since it has been held that changes in shape, form, or configuration of components of a device are obvious absent persuasive evidence that the particular shape, form, or configuration would be found significant to a person of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Such modifications are not critical to the design and would have produced no unexpected results. In addition, the prior art element performs the function specified in the claim in substantially the same manner as the function is performed by the corresponding element described in the specification, and such structure are considered art recognized equivalent structures and would have functional at least equally as well. It would have been obvious to modify the device in this way for the purpose of providing an alternative arrangement that would have functioned at least equally as well. Examiner additionally notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the vertical stability roller such that it protrudes away from the body at a length that is shorter than a length at which the first track wheel and the second track wheel protrude away from the body, since it is prima facie obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of results (MPEP 2143(E)), and minor modification of the protrusion distance of the rollers of WO2012/014245 based on needs of the user or the system would have been a predictable solution with a reasonable expectation of results
Regarding claims 6 and 13, although WO2012/014245 does not explicitly disclose the material composition of the vertical stability roller, Examiner takes Official Notice that it is old and well-known in the art to configure a guide roller such that it is constructed from a rubber or a plastic material. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the vertical stability roller of WO2012/014245 such that it comprises a rubber or a plastic material, since rubber and plastic are desirable materials for the construction of rollers, due to the desirable material characteristics of rubber and plastic (i.e. non-corrosive, shock-absorbing, high durability, etc.). Examiner additionally notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the vertical stability roller of WO2012/014245 such that it comprises a rubber or a plastic material, since the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)
Conclusion
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/JUSTIN B REPHANN/Examiner, Art Unit 3634