UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/037,350
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`07/ 17/2018
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`Kevin William Weeks
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`63084007
`
`9686
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`Intellectual Property Dept.
`D CW1“: LLP
`2 East Mifflin Street
`mm
`Madison, WI 53703-2865
`
`MATTEL BRIAN DAVID
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`mm
`
`3633
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`NOTIFICATION DATE
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`DELIVERY MODE
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`04/01/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`IP-DOCKET@ dewittllp.com
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`16/037,350
`Examiner
`Brian Mattel
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`Applicant(s)
`Weeks et al.
`Art Unit
`3633
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 7/17/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—21 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 7/17/2018 is/are: a). accepted or b)E] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)D Some**
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`C)D None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.. Certified copies of the priority documents have been received in Application No. 15/607,758.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190326
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`

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`Application/Control Number: 16/037,350
`Art Unit: 3633
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`Page 2
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`DETAILED ACTION
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`This Office Action is in response to the application filed July 17, 2018. Claims 1-21 are pending.
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`Claims 1-21 stand rejected as set forth below. The examiner notes there are two claim 10's. The
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`examineris herewith renumbering the second claim 10 as 21. The present application, filed on or after
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`March 16, 2013, is being examined under the first inventor to file provisions of the AIA.
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`Double Patenting
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`The nonstatutory double patenting rejection is based on ajudicially created doctrine grounded
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`in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
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`extension ofthe ”right to exclude" granted by a patent and to prevent possible harassment by multiple
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`assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not
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`identical, but at least one examined application claim is not patenta bly distinct from the reference
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`claim(s) because the examined application claim is eitheranticipated by, or would have been obvious
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`over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
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`Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed.
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`Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164
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`USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
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`overcome an actual or provisional rejection based on nonstatutory double patenting provided the
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`reference application or patent eitheris shown to be commonly owned with the examined application,
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`or claims an invention made as a result of activities undertaken within the scope of a joint research
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`agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for
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`applications not subject to examination under the first inventor to file provisions of the AIA. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321(b).
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`

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`Application/Control Number: 16/037,350
`Art Unit: 3633
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`Page 3
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`The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit
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`www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed
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`determines whatform (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A
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`web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal
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`Disclaimer that meetsall requirements is auto-processed and approved immediately upon submission.
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`For more information about eTerminal Disclaimers, referto
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`www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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`Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable
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`over claims 1-27 of U.S. Patent No. 10, 053, 866. Although the claims at issue are not identical, they are
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`not patentably distinct from each other because all ofthe limitations in the instant application are
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`contained within the claims of the patent.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S. C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a )(1) the claimed invention was patented, described in a printed publication, or in pu blic use, on sale
`or otherwise a vailable to the public before the effective filing date ofthe claimed invention.
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`Claims 1-5 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roth (US
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`2.124.830).
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`In regard to Claim 1, Roth discloses an apparatus (Figs 3, 4) including: a. a channel having a
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`cross-section including: (1) a top surface (16) extending: i. along a top surface plane, and ii. between a
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`first top surface edge and a second top surface edge (Fig 4), (2) a first leg (17) descending at a first
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`internal angle from the first top surface edge to a first leg lower edge, (3) a second leg (18) descending
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`at a second internal angle from the second top surface edge to a second leg lower edge (Fig 3), b. a first
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`flange (10) extending outwardly from the channel: (1) from the first leg lower edge to a first flange free
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`

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`Application/Control Number: 16/037,350
`Art Unit: 3633
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`Page4
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`end, and (2) along a plane parallel to the top surface plane (Fig 4); c. a second flange (19) extending
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`outwardly from the channel: (1) from the second leg lower edge to a second flange free end, and (2)
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`along a plane parallel to the top surface plane (Fig 4).
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`In regard to Claim 2, Roth discloses the apparatus as described above, wherein a. the first
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`internal angle is: (1) greater than 90 degrees, but (2) more perpendicular with respect to the top surface
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`than parallel (Fig 3), b. the second internal angle is: (1) approximately perpendicular with respect to the
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`top surface, and (2) less than the first internal angle (Fig 4).
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`In regard to Claim 3, Roth discloses the apparatus as described above, wherein the distance
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`from the horizontal top to the first leg lower edge is greater than distance between the horizontal top to
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`the second leg lower edge (Fig 4).
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`In regard to Claim 4, Roth discloses the apparatus as described above, wherein the first and
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`second flanges extend along a common plane (Fig 4).
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`In regard to Claim 5, Roth discloses the apparatus as described above, wherein the common
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`plane is parallelto the top surface plane (Fig 4).
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`In regard to Claim 8, Roth discloses the apparatus as described above, wherein the channel is
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`asymmetrical about an axis perpendicularly bisecting the top surface plane (Fig 4).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`A patentfora claimed invention maynot be obtained, notwithstanding thatthe claimed invention is
`not identically disclosed as set forth in section 102, ifthe differences between the claimed inve ntion
`a nd the prior a rt are such that the claimed invention as a whole would have been obvious before the
`effective filingdate ofthe claimed invention to a person having ordinary skill i n the art to which the
`claimed invention pertains. Pa tentabilityshall not be negated bythe manner in which the invention
`was made.
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`Claims 11, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Roth.
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`

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`Application/Control Number: 16/037,350
`Art Unit: 3633
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`Page 5
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`In regard to Claim 11, Roth discloses the apparatus as described above, wherein the first and
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`second flanges extend along a common plane oriented parallel tothe top surface plane but does not
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`specifically disclose the exact angles of the first and second internal angles.
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`It would have been obvious
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`to one of ordinary skill
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`in the art before the effective filing date ofthe claimed invention to make the
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`first internal angle and second internal angle of Roth to be at least 105° and 92° respectively, in order to
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`both ensure water is encouraged to flow down the slope and to efficiently support the flat top portion,
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`respectively.
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`In addition, it has been held that discovering an optimum value of a result effective
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`variable involves only routine skill
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`in the art.
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`In regard to Claim 19, Roth discloses an apparatus (Figs 3, 4) including: a. a channel having an
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`upside-down U-sha ped cross-section, the channel including:(1) a horizontaltop surface (16), (2) afirst
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`leg (17) descending at a first internal angle from the horizontal top to a first leg lower edge (Fig 4), and
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`(3) a second leg (18) descending at a second internal angle from the horizontal top to a second leg lower
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`edge (Fig 4), wherein the second internal angle is:
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`ii. less than the first internal angle; b. a first flange
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`(10) extending horizontally outwardly from the first leg lower edge (Fig 4); and c. a second flange (19)
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`extending horizontally outwardly from the second leg lower edge, wherein the first and second flange
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`extend along a common horizontal plane (Fig 4).
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`Roth does specifically disclose the degree of the second internal angle.
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`It would have been
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`obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to
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`make the second internal angle of Roth to be at least 92°, in order to efficiently support the flat top
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`portion.
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`In addition, it has been held that discovering an optimum value of a result effective variable
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`involves only routine skill in the art.
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`In regard to Claim 21, Roth discloses the apparatus as described above, wherein the first and
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`second flanges extend along a common plane (Fig 4).
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`

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`Application/Control Number: 16/037,350
`Art Unit: 3633
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`Page 6
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`Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Roth as applied to claim 1
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`above, and fu rtherin view of Klein (US Pub 2011/0146180).
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`In regard to Claim 14, Roth discloses the apparatus as described above, wherein the batten is
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`integrallyformed as a unitary piece of sheet steel but does not specifically disclose the steel has a gauge
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`of 24 or less. Klein teachesa wa|| member with a having 24 gauge or less [0007, 0029]. It would have
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`been obvious to one of ordinary skill
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`in the art before the effective filing date ofthe claimed invention to
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`make the apparatusas disclosed by Roth with a gauge of 24 or less as taught by Klein, in order to
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`minimize the weight of the apparatus while using a minimum amount of material to create the roof. In
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`addition, it has been held that discovering an optimum value of a result effective variable involves only
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`routine skill in the art.
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`Claims 6, 7, 9, 10, 12, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Roth as applied to claims 1, 3, 8, 11 and 19 above, and further in view of Waddington (US 5,642,596).
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`In regard to Claims 6, 9, 12 and 20, Roth discloses the apparatus as described above, but does
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`not disclose the first flange having deformable ribs thereon. Waddington teachesa first flange has
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`deformable ribs (21, 22) thereon (Figs 1-4); the ribs being defined by upward and downward zig-zagging
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`bends in the first flange as the first flange extends outwardly (Figs 1-4).
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`It would have been obvious to
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`one of ordinary skill
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`in the art before the effective filing date ofthe claimed invention to modify the
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`flange as disclosed by Roth to include multiple deformable ribs as taught by Waddington, since as
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`Waddington states in column 4, lines 9-15 that they will serve to stiffen the flange.
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`In regard to Claims 7 and 10, Roth discloses the appa ratusas described above, wherein the
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`distance from the first leg lower edge to the first flange free end is greater than the distance from the
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`second leg lower edge to the second flange free end (Fig 3).
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`

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`Application/Control Number: 16/037,350
`Art Unit: 3633
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`Page 7
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`In regard to Claim 13, Roth discloses the apparatus as described above, wherein: a. the first
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`flange has a turn up of at least 90" at its first flange free end (Fig 2), and b. the second flange has a turn
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`up of at least 90° at its second flange free end (Fig 4).
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`Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Roth in view of
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`Waddington.
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`In regard to Claim 15, Roth discloses anapparatus (Figs 3, 4), including: a. a channel having an
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`upside-down U-sha ped cross-section, the channel including:(1) a horizontaltop surface (16) (Fig 4), (2) a
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`first leg (17) descending at a first internal angle from the horizontal top to a first leg lower edge, and (3)
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`a second leg (18) descending at a second internal angle from the horizontal top to a second leg lower
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`edge, wherein: i. the second internal angle is less thanthe first internal angle (Fig 4), and ii. the distance
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`between the horizontal top to the second leg lower edge is less than the distance from the horizontal
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`top to the first leg lower edge (Fig 4); b. a first flange (10) extending horizontally outwardly from the first
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`leg lower edge (Fig 4); and c. a second flange (19) extending horizontally outwardly from the second leg
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`lower edge (Fig 4), but does not disclose the first flange having deformable ribs thereon.
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`Waddington teaches a first flange has deformable ribs (21, 22) thereon (Figs 1-4).
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`It would have
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`been obvious to one of ordinary skill
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`in the art before the effective filing date ofthe claimed invention to
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`modify the flange as disclosed by Roth to include multiple deformable ribs as taught by Waddington,
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`since as Waddington states in column 4, lines 9-15 that they will serve to stiffen the flange.
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`In regard to Claim 16, Roth discloses the apparatus as described above, wherein the channel is
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`asymmetrical about a vertical axis bisecting the top surface (Fig 4).
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`In regard to Claim 17, Roth discloses the apparatus as described above, wherein the first and
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`second flanges extend along a common horizontal plane (Fig 4).
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`In regard to Claim 18, Roth discloses the apparatus as described above, wherein the first and
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`second flanges include turn-ups at their free edges (Figs 2, 4).
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`

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`Application/Control Number: 16/037,350
`Art Unit: 3633
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`Page 8
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applica nt's
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`disclosure. See list of references on PTO-892.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to Brian Mattei whose telephone number is (571)270-3238. The examiner can
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`normally be reached on Monday to Friday 8:00 to 5:00.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`Ifattemptsto reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Brian Glessner can be reached on 571-272-6754. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information rega rdingthe status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). Ifyou would like assistance from a USPTO Customer
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
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`CANADA) or 571-272-1000.
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`/BR|AN D MATTEI/
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`Primary Examiner, Art Unit 3633
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`