DETAILED ACTION
Election/Restrictions
Examiner notes that parent application was subjected to a restriction requirement. A restriction requirement is not being made in the current application. A search burden no longer applies due to the subject matter of the universal roller bracket being previously searched.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “the distance of each roller tube of the second plurality of roller tubes from the inner surface of the second section is different than the distance of each roller tube of the first plurality of roller tubes of the first universal roller bracket from the inner surface of the first section” of claim 13 must be shown or the feature(s) canceled from the claim(s). It appears the drawings show the roller stem of the second panel provided in a different roller tube so that different distances are provided, not different distances. No new matter should be entered.
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 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.
Claims 1-8 are 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.
Claim 1 requires “each roller tube being spaced a different distance from the surface of the movable barrier.” It is unclear what is required of the limitation since a movable barrier is not understood to be positively required and is directed to an intended use. Therefore “the surface of the movable barrier” is directed to structure of the intended use and it is not clear from what structure of the universal roller bracket each of the roller tubes are spaced a different distance. Dependent claims referring to the structure of the movable barrier are not understood to be positively required.
Claim 5 recites “the distance of the roller stem from the surface of the movable barrier is based on an installation height of the roller stem when the movable barrier is in a closed position.” It is unclear what is required since the roller bracket itself does not require a movable barrier. It is unclear what defines an installation height.
Claim 6 recites “wherein the different distances of each roller tube correspond to a non-linear relationship.” It is unclear if the distances are non-linear with each other or if they are non-linear from the surface. It is unclear what the relationship is between and the claim language is confusing.
In view of the 112 issues discussed above the claims have been examined as best understood.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 14 of U.S. Patent No. 12,345,082. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims 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, 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pemberton (US 3,447,192).
Regarding claim 1, Pemberton discloses a universal roller bracket for a movable barrier having a surface (directed to an intended use), the universal roller bracket (56, Fig 5) comprising:
a first bracket section (58) configured to be coupled to the movable barrier;
a first arm (61) extending from the first bracket section (Fig 5); and
a plurality of roller tubes (66, 67, 68, 69) supported by the first arm and spaced from the surface of the movable barrier by the first arm (61), each roller tube of the plurality of roller tubes (66, 67, 68, 69) configured to receive a roller stem (51), each roller tube being spaced a different distance from the surface of the movable barrier (Fig 5).
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Regarding claim 4, Pemberton discloses a second bracket section (59) spaced from the first bracket section (58), the second bracket section configured to be fixedly coupled to the surface of the movable barrier with a fastener (Fig 5).
Regarding claim 5, as best understood, Pemberton discloses wherein the distance of the roller stem (51) from the surface of the movable barrier is based on an installation height of the roller stem when the movable barrier is in a closed position (roller stem can be installed in one of the roller tubes (66, 67, 68, 69) and each roller tube provides a different installation height as evident in Fig 5).
Regarding claim 6, as best understood, Pemberton discloses wherein the different distances of each roller tube correspond to a non-linear relationship (Fig 5).
Regarding claim 7, Pemberton discloses further comprising a second arm (62), the first arm (61) and the second arm (62) forming a gap between the plurality of roller tubes and the surface of the movable barrier (Fig 5).
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 2, 3, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Pemberton, as applied in claim 1 above, in further view of De Zen (US 6,679,310).
Regarding claims 2, 3, and 8, although Pemberton teaches that the first bracket section (Fig 5) is configured to be coupled to the surface of the movable barrier, Pemberton fails to disclose that the first bracket section is slidably coupled and that the first bracket section includes a protrusion configured to be positioned within a complementary groove of the surface of the movable barrier, wherein the first bracket section includes a protrusion configured to be inserted into a complementary groove of the surface of the movable barrier. Instead, Pemberton teaches that the first bracket section is coupled to the surface of the movable barrier via a fastener. However, providing a slidably coupled means of fastening including a protrusion positioning within a complementary groove is known, as taught by De Zen (Fig 4; protrusion of 26 is received within a groove 14 for securing 26 to a barrier). 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 Pemberton such that the fastener of the first bracket section (58) is substituted with a protrusion and the movable barrier is provided with a complementary groove in order to removably secure the bracket to the barrier. The arrangement taught by De Zen provides alternative structure for equivalently securing elements together. Such modification would not lead to any new or unpredictable results.
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Pemberton, as applied in claim 1 above, in further view of De Zen.
Regarding claim 9, Pemberton discloses a movable barrier system (upwardly acting door structure), comprising:
a first section (panel) of a movable barrier comprising an inner surface and an outer surface,
a first universal roller bracket (Fig 5) comprising:
a first bracket section (58) comprising a fastener configured to attach to the inner surface of the first section; and
a first plurality of roller tubes (66, 67, 68, 69) spaced from the inner surface (Fig 5), wherein each roller tube is positioned a different distance from the inner surface; and
a roller (52) comprising a roller stem (51), wherein the roller stem is configured to be positioned within one of the first plurality of roller tubes (66, 67, 68, 69).
Pemberton fails to disclose the inner surface of the first section of the movable barrier comprising a retaining groove and the first bracket section comprising a protrusion configured to be positioned within the retaining groove of the first section. Pemberton teaches that the first bracket section is coupled to the surface of the movable barrier via a fastener. However, providing a slidably coupled means of fastening including a protrusion positioning within a retaining groove formed in the first section of a movable barrier is known, as taught by De Zen (Fig 4; protrusion of 26 is received within a groove 14 for securing 26 to a barrier). 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 Pemberton such that the fastener of the first bracket section (58) is substituted with a protrusion and the movable barrier is provided with a retaining groove in order to removably secure the bracket to the barrier. The arrangement taught by De Zen provides alternative structure for equivalently securing elements together. Such modification would not lead to any new or unpredictable results.
Regarding claim 10, Pemberton discloses further comprising a track (11) angled relative to a vertical axis of the first section (track shown in Fig 1).
Regarding claim 11, Pemberton discloses wherein the movable barrier is configured to be substantially vertical when in a closed position when the roller stem is positioned within the one of the first plurality of roller tubes (evident in Fig 1).
Regarding claim 12, Pemberton discloses wherein the first universal roller bracket includes a second bracket section (59) configured to be fixedly coupled (fastener) to the first section (Fig 5).
Regarding claim 13, Pemberton discloses a second section of the movable barrier comprising an inner surface and an outer surface (upper panel); and a second universal roller bracket (56) including a second plurality of roller tubes (plurality of brackets shown in Fig 1 provided as the bracket of Fig 5), the second universal roller bracket configured to be coupled to the second section, wherein each roller tube of the second plurality of roller tubes is positioned a different distance from the inner surface of the second section (Fig 5).
As best understood, Pemberton discloses that the roller stem of the first section is positioned in one roller tube of the first plurality of roller tubes and that the roller stem of the second section is positioned in one roller tube of the second plurality of roller tubes resulting in the distances of the roller stems from the respective inner surfaces being different. Pemberton does not specifically disclose the distance of each roller tube of the second plurality of roller tubes from the inner surface of the second section is different than the distance of each roller tube of the first plurality of roller tubes of the first universal roller bracket from the inner surface of the first section. However, providing different distances involves a mere change in size of the components and 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 Pemberton such that the distances of the roller tubes of the second plurality of roller tubes from the inner surface of the second section are different from the distances of each roller tube of the first plurality of roller tubes since it involves a mere change in size of the bracket which would not lead to any new or unpredictable results. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 14, Pemberton discloses wherein the second section is positioned above the first section and the second universal roller bracket is positioned above the first universal roller bracket when the movable barrier is in a closed position (second section is of an upper panel and first section is of a lower panel; Fig 1).
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Pemberton in further view of De Zen.
Regarding claims 15-17, Pemberton discloses method of assembling a movable barrier system, the method comprising:
positioning a roller (52) within a track (11) of the movable barrier system (Fig 1);
the universal roller bracket comprising a plurality of roller tubes (66, 67, 68, 69) (Fig 5) spaced from the section of the movable barrier, wherein each roller tube of the plurality of roller tubes is spaced from the section by a different distance (Figs 1 and 5);
inserting a roller stem (51) of the roller within one roller tube of the plurality of roller tubes; and
fixedly coupling a second surface (59) of the universal roller bracket (56) to the section of the movable barrier.
Pemberton discloses coupling a first surface (58) of a universal roller bracket (56) to a section of a movable barrier (Fig 1) by fixedly coupling the first surface of the universal roller bracket to the section of the movable barrier, and the universal roller bracket being a position near an end of the section of the movable barrier. Pemberton fails to teach slidably coupling the universal roller bracket to the movable barrier and instead teaches coupling by bolts. However, slidably coupling a first surface of a bracket to a section of a movable barrier and sliding the bracket to a position near an end of the section of the movable barrier is a known coupling technique. Providing a slidably coupled means of fastening including a protrusion positioning within a retaining groove formed in the first section of a movable barrier is taught by De Zen (Fig 4; protrusion of 26 is received within a groove 14 for securing 26 to a barrier). 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 Pemberton such that the fastener of the first bracket section (58) is substituted with a protrusion and the movable barrier is provided with a retaining groove in order to removably secure the bracket to the barrier. The arrangement taught by De Zen provides alternative structure for equivalently securing elements together. De Zen teaches sliding the protrusions in order to slidably couple the bracket to the movable barrier. Such modification would not lead to any new or unpredictable results. As modified, the method includes slidably coupling a first surface of a bracket to a section of a movable barrier and sliding the bracket to a position near an end of the section of the movable barrier and wherein slidably coupling the first surface of the universal roller bracket to the section of the movable barrier includes positioning a protrusion of the universal roller bracket within a corresponding groove of the section of the movable barrier.
Regarding claim 18, Pemberton discloses coupling the second surface of the universal roller bracket to the section of the movable barrier includes coupling the second surface of the universal roller bracket to the section of the movable barrier with a fastener (bolt).
Regarding claim 19, Pemberton discloses wherein the one roller tube of the plurality of roller tubes into which the roller stem is inserted is selected based on an installation height of the universal roller bracket on the section of the movable barrier (roller stem can be installed in one of the roller tubes (66, 67, 68, 69) and each roller tube provides a different installation height as evident in Fig 5).
Regarding claim 20, Pemberton discloses wherein the installation height of the universal roller bracket is determined when the movable barrier is in a closed position (Fig 1).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at 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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/Johnnie A. Shablack/Primary Examiner, Art Unit 3634
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