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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/11/2025 was considered by the examiner.
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 1-3, 5-10, 13-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11732480. Although the claims at issue are not identical, they are not patentably distinct from each other because US11732480 encompasses the scope of the instant claim and some.
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, 8-10, 13, 14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cangialosi US20110162289.
Claim 1. Cangialosi discloses a single piece, gutter guard for covering a gutter attached to a building, comprising: a roof attachment section (110); a gutter lip attachment section (220); a solid step section composed of a plurality of connected steps having treads and risers (between 120-334), and integrally connected to the roof attachment section; a trough integrally connected to a last step of the solid step section and to the gutter lip attachment section (between 334-230), wherein a floor of the trough has a width that is wider than a tread of the last step; and a plurality of orifices disposed in at least one of treads and risers of the connected steps and in the trough (as shown in Fig.3).
Claim 2. Cangialosi discloses the trough and the gutter lip attachment section share a common wall (230).
Claim 3. Cangialosi discloses the floor of the trough is disposed below a top plane of the gutter lip attachment section (Fig.3).
Claim 5. Cangialosi discloses an angle of junctions between treads and risers is approximately 90 degrees (shown in Fig.3).
Claim 8. Cangialosi discloses the plurality of orifices are disposed in junctions of the treads and risers (Fig.4).
Claim 9. Cangialosi discloses the plurality of orifices are disposed proximal to junctions of the treads and risers (Fig.4).
Claim 10. Cangialosi discloses the plurality of orifices in the trough are disposed adjacent to the common wall (Fig.3-4).
Claim 13. Cangialosi discloses the plurality of orifices are at least one row of orifices (Fig.4).
Claim 14. Cangialosi discloses rein the at least one rows are offset from each other (Fig.4).
Claim 19. Cangialosi discloses a tread width of the treads is greater than a riser height of the risers (Fig.4).
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, 7, 11, 12, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cangialosi US20110162289 as applied to claim 1 above.
Claim 4. Cangialosi fails to disclose a height of the risers and a length of the treads are approximately equal. It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to provide steps with riser height and thread length of approximately equal size with the motivation to capture as much water as possible, besides such a modification would have involved 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.
Claim 6. Cangialosi fails to disclose an angle of junctions between treads and risers is less than approximately 90 degrees. It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to provide claimed angle with the motivation of slowing the running of water while capturing as much water as possible, besides 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.
Claim 7. Cangialosi fails to disclose a rear of the treads are lower than a front of the treads. It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to provide an outside corner of the at least one of the connected
steps partially or completely overhangs an orifice in a lower adjacent step's tread with
the motivation to capture as much water as possible, as a person with ordinary skill has
good reason to pursue known options within his or her technical grasp.
Claim 11 and 12. Cangialosi fails to disclose orifices disposed in the common wall or the plurality of orifices in the trough are disposed in a junction of the trough and the gutter lip attachment portion. It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to provide orifices in the common wall or in a junction of the trough and the gutter lip attachment portion with the motivation of capturing as much water as possible into the gutter before spilling over, as a person with ordinary skill has good reason to pursue known options within his or her technical grasp.
Claim 15. Cangialosi fails to disclose the orifices are at least one of non-circular in shape. It would have been an obvious matter of design choice to have a non-circular shaped orifices such as a diamond shaped to for aesthetic features, since such a modification would have involved 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.
Claim 16 and 17. Cangialosi fails to disclose an outside corner of the plurality of connected steps partially/completely overhangs an orifice in a lower adjacent step's tread. It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to provide an outside corner of the at least one of the connected steps partially or completely overhangs an orifice in a lower adjacent step's tread with the motivation to capture as much water as possible, as a person with ordinary skill has good reason to pursue known options within his or her technical grasp.
Claim 18. Cangialosi fails to disclose an angle of an outside corner and inside corner of
the at least one of the connected steps is less than 90 degrees. It would have been
obvious to one of ordinary skill in the art before the filing date of the instant invention to
provide claimed angle with the motivation of slowing the running of water while
capturing as much water as possible, besides 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.
Claim 20. Cangialosi fails to disclose one or more steps of the plurality of connected steps is at least one of a different size and different shape than another one or more other steps of the plurality of connected steps. It would have been obvious to one of ordinary skill in the art before the filing date of the instant invention to provide steps of different sizes with the motivation to capture as much water as possible at different steps, besides such a modification would have involved 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to attached NOTICE OF REFERENCE CITED.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BABAJIDE A DEMUREN whose telephone number is (571)270-7017. The examiner can normally be reached Mon-Fri 9am-5pm.
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 Glessner can be reached on 5712726754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BABAJIDE A DEMUREN/Primary Examiner, Art Unit 3633
