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 .
Claim Objections
Claims 1 and 11 are objected to because of the following informalities: “for piping for pipes” should read “for pipes”, and “comprising” in line 2 of each claim should read “, comprising:”. Appropriate correction is required.
Claims 2-10 and 12-16 are objected to because of the following informalities: there should be a comma before the “wherein” or “further comprising” in line 1 of each claim. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: “a building” should read “the building”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: “the spacers” should read “the one or more spacers” to remain consistent with the original recitation of this limitation in claim 8. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The “means to adjust the size of the opening” in claims 4 and 13 is being interpreted under 112(f). As there is only one embodiments disclosed and no specific disclosure in the specification what the “means” includes it is interrupted as including exactly what is detailed in the sole embodiment of such as detailed in the specification and Figs. 2B, 3A, and 3E. Such includes the bottom wall having six concentric weakened portions in a U-shape surrounding the opening (which is also U-shaped) with an open portion of the U-shape open to the back of the bottom wall, each weakened portion being an indentation in the surface of the bottom wall, wherein a U-shaped portion of material of the bottom wall can be removed by cutting along one of the U-shaped weakened portions to enlarge the U-shaped opening to one of six sizes each larger than the original opening, plus any other disclosed structure of such.
The “means to adjust the size of the opening” in claims 7 and 14 is being interpreted under 112(f). As there is only one embodiments disclosed and no specific disclosure in the specification what the “means” includes it is interrupted as including exactly what is detailed in the sole embodiment of such as detailed in the specification and Figs. 2B and 6A-D. Such includes the bottom cover having six concentric weakened portions formed in a broken U-shape surrounding the opening (which is circular with an asymmetric opening portion joined thereto) with an opening portion of the U-shape open to the front side of the cover and asymmetrically arranged, wherein a U-shaped portion of material of the bottom cover can be removed by cutting along one of the U-shaped weakened portions to enlarge the circular opening to one of six sizes each larger than the original opening and each U-shaped (i.e. transforming the circular opening into a U-shaped opening), and each weakened portion being an indentation in the bottom wall of the bottom cover, plus any other disclosed structure of such.
Though these 112(f) interpretations also include “equivalents thereof” there are no known or art-recognized equivalents of the specifically disclosed structure.
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 6-7 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 6 recites the limitation “the bottom cover”, which is indefinite as it lacks antecedent basis and it is unclear if this is intended to be newly claimed in this claim or if this claim was intended to depend on a claim that does recite the bottom cover (e.g. claim 5). Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended claim 6 to depend on claim 5.
Claim 7 is indefinite at least by virtue of depending on indefinite claim 6.
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 1-3, 5-6, 8-12, and 15-16, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Lechuga (US 2011/0203201) alone.
With regard to claim 1, Lechuga discloses a side wall seal (including at least 100) for piping for pipes (as seen in Figs. 1A, disclosed in the abstract, etc. it is capable of such an intended use) exiting a building (as seen in Figs. 1A, etc. it is capable of use as/with such. Additionally see the abstract, paras. [0020], etc.) comprising a cover (100 with 400/500) having a top wall (as labeled in Examiner annotated Fig. 1A below), side wall (as labeled in Examiner annotated Fig. 1A below), bottom wall (as labeled in Examiner annotated Fig. 1A below, also see 125 in Fig. 2A) and back wall (i.e. as labeled in Examiner annotated Fig. 1A below the wall including flange receiving fastener elements 1000), the back wall having an opening (as seen in Figs. 1B, etc.) adapted to receive the pipes (as seen in Figs. 1A-B, etc. it is capable of such and thus is adapted for such by it’s illustrated structure), the cover comprising a frame (i.e. the material of 100) of rigid plastic (see para. [0023, etc.]) overmolded (see para. [0063], etc.) with an elastomer (of 500, see para. [0063], etc.), wherein the cover is adapted to attach to the building and cover the pipes (as disclose din the abstract, seen in Figs. 1A-B, etc. it is adapted for such by way of its disclosed structure and in that it is capable of such).
Lechuga is silent as to what elastomer the overmolded part of the cover is made of and thus fails to explicitly disclose it is thermoplastic elastomer.
However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the overmolded part of the cover is made of thermoplastic elastomer as Examiner hereby takes Official Notice that the art is replete with examples of rigid elements overmolded with thermoplastic elastomer. Such a modification provides the expected benefit of rubber-like elasticity of thermoset materials with the melt-processing ease of standard plastics, good UV resistance, cost effectiveness, etc.. Additionally and/or alternatively it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the overmolded part of the cover is made of thermoplastic elastomer as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification provides the expected benefit of rubber-like elasticity of thermoset materials with the melt-processing ease of standard plastics, good UV resistance, cost effectiveness, etc..
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With regard to claim 2, Lechuga discloses that the cover is adapted to receive the pipes exiting the side wall of a building at a right angle (i.e. as seen in the structure of Figs. 1A, etc. it is adapted for such as the structure is capable of such as the pipe can clearly initially run straight out from the wall before any bends, which would be perpendicular to the plane of the wall and thus at a right angle thereto. Additionally see the embodiments described in para. [0067] disclosing a different right angle (i.e. 90 degree) interpretation).
With regard to claim 3, Lechuga discloses that the cover is bell-shaped (i.e. examiner notes that as Applicant has not provided a specific definition of such and as bells come in a variety of hollow shapes, as 100 has a shape that could make a bell it is considered bell-shaped).
With regard to claim 5, Lechuga discloses a bottom cover (700) adapted to be attached to the bottom wall of the cover (as seen in Fig. 1B, etc.).
With regard to claim 6, Lechuga discloses that the bottom cover is made of plastic (as detailed in para. 0073], etc.).
With regard to claim 8, Lechuga discloses one or more spacers (200 or 300 or even each 1000) adapted to attach to the cover and the building (as seen in Figs. 1A-1B, etc. by virtue of the structure of 200 or 1000s it/they is/are capable of such).
With regard to claim 9, Lechuga is silent as to what material the spacers are made of and thus fails to explicitly disclose plastic.
However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the spacers are made of plastic as Examiner hereby takes Official Notice that the art is replete with examples similar spacers made of plastic. Such a modification provides the expected benefit low weight, low costs, good durability, chemical resistance, etc.. Additionally and/or alternatively it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the spacers are made of plastic as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification provides the expected benefit low weight, low costs, good durability, chemical resistance, etc..
With regard to claim 10, Lechuga discloses that the cover further comprises a flange (124) at the back wall (as seen in Figs. 1A-B, 3A, etc.) having apertures (121, receiving fasteners 1000 as seen in Figs. 1A-B, etc.) for attaching the flange to the building (as seen in Fig. 1B, etc. and as such are capable of the claimed use).
With regard to claim 11, Lechuga discloses a side wall seal (including at least 100) for piping for pipes (as seen in Figs. 1A, disclosed in the abstract, etc. it is capable of such an intended use) exiting a building side wall (as seen in Figs. 1A, etc. it is capable of use as/with such. Additionally see the abstract, paras. [0020], etc.) at a right angle (i.e. as seen in the structure of Figs. 1A, etc. it is adapted for such as the structure is capable of such as the pipe can clearly initially run straight out from the wall before any bends, which would be perpendicular to the plane of the wall and thus at a right angle thereto. Additionally see the embodiments described in para. [0067] disclosing a different right angle (i.e. 90 degree) interpretation), comprising a cover (100 with 400/500) having a top wall (as labeled in Examiner annotated Fig. 1A below), side wall (as labeled in Examiner annotated Fig. 1A below), bottom wall (as labeled in Examiner annotated Fig. 1A below, also see 125 in Fig. 2A) and back wall (i.e. as labeled in Examiner annotated Fig. 1A below the wall including flange receiving fastener elements 1000), the back wall having an opening (as seen in Figs. 1B, etc.) adapted to receive the pipes (as seen in Figs. 1A-B, etc. it is capable of such and thus is adapted for such by its illustrated structure), the cover comprising a frame (i.e. the material of 100) of rigid plastic (see para. [0023, etc.]) overmolded (see para. [0063], etc.) with an elastomer (of 500, see para. [0063], etc.), wherein the cover is adapted to attach to the building and cover the pipes (as disclose din the abstract, seen in Figs. 1A-B, etc. it is adapted for such by way of its disclosed structure and in that it is capable of such); and a plastic bottom cover (700, disclosed in para. [0073] as plastic) adapted to be attached to the bottom wall of the cover (as seen in Fig. 1B, etc.).
Lechuga is silent as to what elastomer the overmolded part of the cover is made of and thus fails to explicitly disclose it is thermoplastic elastomer.
However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the overmolded part of the cover is made of thermoplastic elastomer as Examiner hereby takes Official Notice that the art is replete with examples of rigid elements overmolded with thermoplastic elastomer. Such a modification provides the expected benefit of rubber-like elasticity of thermoset materials with the melt-processing ease of standard plastics, good UV resistance, cost effectiveness, etc.. Additionally and/or alternatively it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the overmolded part of the cover is made of thermoplastic elastomer as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification provides the expected benefit of rubber-like elasticity of thermoset materials with the melt-processing ease of standard plastics, good UV resistance, cost effectiveness, etc..
With regard to claim 12, Lechuga discloses that the cover is bell-shaped (i.e. examiner notes that as Applicant has not provided a specific definition of such and as bells come in a variety of hollow shapes, as 100 has a shape that could make a bell it is considered bell-shaped).
With regard to claim 15, Lechuga discloses one or more spacers (200 or 300 or even each 1000) adapted to attach to the cover and the building (as seen in Figs. 1A-1B, etc. by virtue of the structure of 200 or 1000s it/they is/are capable of such).
Lechuga is silent as to what material the spacers are made of and thus fails to explicitly disclose plastic.
However it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the spacers are made of plastic as Examiner hereby takes Official Notice that the art is replete with examples similar spacers made of plastic. Such a modification provides the expected benefit low weight, low costs, good durability, chemical resistance, etc.. Additionally and/or alternatively it would have been considered obvious to one having ordinary skill in the art, at the time the invention was made, to have modified the device of Lechuga such that the spacers are made of plastic as it has been held to be within the general skill in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Such a modification provides the expected benefit low weight, low costs, good durability, chemical resistance, etc..
With regard to claim 16, Lechuga discloses that the cover further comprises a flange (124) at the back wall (as seen in Figs. 1A-B, 3A, etc.) having apertures (121, receiving fasteners 1000 as seen in Figs. 1A-B, etc.) for attaching the flange to the building (as seen in Fig. 1B, etc. and as such are capable of the claimed use).
Allowable Subject Matter
Claims 4 and 13-14 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. Additionally, upon overcoming the above 112(b) rejection, claim 7 would indicated as 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.
The following is a statement of reasons for the indication of allowable subject matter: as discussed in the 23 July 2026 interview, the above cited references fails to disclose the exact structure of either of the “means to adjust”, as interpreted above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides additional examples of similar side wall seals (i.e. pipe pass-throughs, seals, grommets, etc.) including references such as US 2023/0098027 which would appear to possible reject at least claims such as claim 1, etc. under 35 USC 102(a)(1), and US 2017/0030491 which would appear to render obvious many, if not all of the claims when combined with a secondary reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675
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