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 .
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, 3-6, 36-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 17/787696 in view of ‘991 (GB2528991).
All the limitations present in claims 1-2 of copending Application No. 17/787696 are anticipated or made obvious by this present application except the façade comprising a plurality of self-supporting modules that are secured in side by side and one on top of the other arrangement. However ‘991 discloses a method of erecting a multi-storey structure having a façade (fig. 1, 11) disposed around a perimeter of the multi-storey structure, the façade comprising a plurality of self-supporting modules (2, page 3 of submitted translation, paragraph 3) that are secured in side by side and one on top of the other arrangement (fig. 4), therefore this limitation does not make any patentable contribution over the prior art.
This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 1, 3-6, 18, 32-33, 36-43 are rejected under 35 U.S.C. 103 as being unpatentable over ‘491 (WO2019006491).
For claim 1, ‘491 discloses a method of erecting a multi-storey structure (figs. 11-12) having a
facade (100, 200) disposed around at least a portion of a perimeter of the multi-storey structure, wherein
during construction, at least a portion of the facade is disposed to extend beyond an upper work
area (160, the examiner considers 160 the upper work area since no other work areas have been defined) of the structure and forms at least part of a safety barrier for the upper work area, and
wherein in erecting the multi-storey structure, at least one further floor (600) of the structure is erected
over the upper work area, with the or each further floor forming a respective subsequent upper
work area of the structure, and wherein the facade is constructed prior to the forming of the at
least one further floor, wherein at least a two-storey height of facade being positioned above the
upper work area and affixed to the multi-storey structure prior to erecting the further floor so that
a one or two-storey height of facade is positioned above any subsequent upper work area that
is formed to maintain a safety barrier for the upper work areas, wherein the or each further floor is formed such that the floor connects with the façade (via 205A in fig. 12).
‘491 does not explicitly disclose extending the façade to increase the height of the façade to form the safety barrier for the construction of a subsequent floor above the at least one further floor.
However ‘491 discloses the obviousness of extending the façade to increase the height of the façade to form the safety barrier for the construction of multiple storeys/floors above the upper work area (see abstract of ‘491) and it would be obvious to one having ordinary skill in the art to extend the façade to increase the height of the façade to form the safety barrier for the construction of a subsequent floor above the at least one further floor since this merely involves duplicating an already disclosed method and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St, Regis Paper Co. v. Bemis Co., 193 USPQ 8. One of ordinary skill in the art would be motivated to extend the façade to increase the height of the façade to form the safety barrier for the construction of a subsequent floor above the at least one further floor to construct a building with at least 3 storeys.
For claim 3, ‘491 discloses a method of erecting a multi-storey structure according to
claim 1, wherein the facade is constructed from a plurality of connected facade panels and/or
modules (fig. 13, 100).
For claim 4, ‘491 discloses that the façade panels and/or modules are connected side by side, and one on top of the other (fig. 13, 100).
For claim 5, ‘491 discloses a method of erecting a multi-storey structure according to claim 1, comprising constructing the facade as a facade framework having an inner frame (fig. 2, 100E).
For claim 6, ‘491 discloses that the facade framework is formed from a plurality of connected facade modules, each module comprising an inner frame portion that in use forms part of the inner frame of the framework (fig. 13, 100E).
For claim 18, ‘491 discloses that the facade framework has an outer frame (fig. 2, 100A-B), and wherein the facade modules further comprise an outer frame portion that in use forms part of the outer frame of the framework.
For claim 32, ‘491 discloses that the facade panels and/or modules each include panel engagement
sections (fig. 22, 205) and a floor connection section (205A-B), the panel engagement sections being configured to allow the facade panel and/or module to be engaged with another facade panel and/or
module above or below within the facade, the floor connection section being adapted to connect a floor
(600) with the facade panel and/or module.
For claim 33, ‘491discloses that in erecting the multi-storey structure, the at least one
further floor (fig. 11, 600) engages with the floor connection section (205A-B) of a plurality of the facade
panels and/or modules of the facade extending beyond the upper work area, and the facade being
constructed in advance of the at least one further floor by interconnecting further ones of the facade
panels and/or modules to the facade through the panel engagement sections (205).
For claim 36, ‘491 discloses a method of erecting a multi-storey structure (figs. 11-12) having a facade (100, 200) disposed around at least a portion of a perimeter of the multi-storey structure, wherein during construction, at least a portion of the facade is disposed to extend beyond an upper work area of the structure to form at least part of a safety barrier for the upper work area, and to provide at least part of scaffolding or a perimeter screen for the construction of at least one further floor (600) over the upper work area, the facade being affixed to the multi-storey structure prior to the at least one further floor being formed and wherein the at least one further floor (600) is formed such that the floor connects with the façade (via 205A).
‘491 does not explicitly disclose that at least a two storey height of façade is positioned above the upper work area and affixed to the multi-storey structure prior to erecting the further floor, and extending the façade to increase the height of the façade to form at least part of the scaffolding or a perimeter screen for the construction of a subsequent floor above the at least one further floor.
However ‘491 discloses the obviousness of extending the façade to increase the height of the façade to form the safety barrier for the construction of multiple storeys/floors above the upper work area (see abstract of ‘491) and it would be obvious to one having ordinary skill in the art to position at least a two storey height of façade above the upper work area and affixed to the multi-storey structure prior to erecting the further floor, and extending the façade to increase the height of the façade to form at least part of the scaffolding or a perimeter screen for the construction of a subsequent floor above the at least one further floor since this merely involves duplicating an already disclosed method and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St, Regis Paper Co. v. Bemis Co., 193 USPQ 8. One of ordinary skill in the art would be motivated to position at least a two storey height of façade above the upper work area and affixed to the multi-storey structure prior to erecting the further floor, and extending the façade to increase the height of the façade to form at least part of the scaffolding or a perimeter screen for the construction of a subsequent floor above the at least one further floor to construct a building with at least 3 storeys.
For claim 37, ‘491 discloses erecting the at least one further floor with the facade forming at least part of the scaffolding or a perimeter screen for the construction (multiple storeys are formed).
For claim 38, ‘491 discloses that in forming at least part of the scaffolding or a perimeter screen for a further floor to be constructed, the façade extends at least one storey height above the location of the further floor to be constructed (fig. 12, 200, 600).
For claim 39, ‘491 discloses that the at least one further floor is formed such that the floor connects with the façade (fig. 12, 200, 600).
For claim 40, ‘491 discloses that the facade is constructed from a plurality of connected facade panels and/or modules (100, 200).
For claim 41, ‘491 discloses that the façade panels and/or modules each including panel engagement sections and a floor connection section, the panel engagement sections being configured to allow the facade panel and/or module to be engaged with another facade panel and/or module above or below within the facade, the floor connection section being adapted to connect a floor with the facade panel and/or module (see rejection of claim 32).
For claim 42, ‘491 discloses that in in erecting the multi-storey structure, the at least one further floor engages with the floor connection section of a plurality of the facade panels and/or modules of the facade extending beyond the upper work area, and the facade being constructed in advance of the at least one further floor by interconnecting further ones of the facade panels and/or modules to the facade through the panel engagement sections (see rejection of claim 33).
For claim 43, ‘491 discloses a brace is positioned to hold and level the facade when affixing the facade to the multi-storey structure (fig. 3, 400).
Claim(s) 19-23, 26, 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over ‘491 (WO2019006491) in view of ‘362 (GB2502362).
For claim 19, ‘491 does not disclose supporting one or more loading platforms from
the facade framework during construction, the one or more loading platforms projecting outwardly from
the facade framework.
‘362 discloses a method of erecting a multi-storey structure (figs. 2-21) having a facade (100) disposed around a perimeter of the multi-storey structure and comprising supporting one or more loading
platforms from the facade framework during construction (page 12 last paragraph of attached translation), the one or more loading platforms projecting outwardly from the facade framework (inherent).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to support one or more loading platforms from the façade framework of ‘491 during construction as made obvious by ‘362 to provide a support for construction workers.
For claim 20, the combination discloses supporting one or more balconies on the façade framework (page 7 paragraph 8 of attached publication) and it would be obvious to one having ordinary
skill in the art to support one or more balconies projecting from the facade framework since balconies are well-known building accessories for multi-storey structures to increase the utility of the building.
For claim 21, the combination discloses a method of erecting a multi-storey structure comprising:
locating a plurality of facade panels and/or modules (‘491 fig. 11, 100) around at least a portion of the
perimeter of a level of the multi-storey structure, the facade panels and/or modules having two opposing
faces and the obviousness of having a further floor connection member (‘362 fig. 21, 200) extending from a first opposing face of the panels and /or modules; orienting the facade panels and/or modules such that the further floor connection members extend inwardly into the multi-storey structure; forming a further floor (‘362 fig. 21, 60) at the height of the further floor connection members, such that the further floor connection members engage the further floor to connect the further floor with the plurality of facade panels and/or modules.
For claim 22, the combination discloses that the plurality of facade panels and/or modules each include an inner frame (‘491, 100A), the method comprising constructing the facade by interconnecting the façade modules such that the inner fames of the modules form a facade framework; wherein the further floor connection members (‘362 fig. 21) are disposed on the inner frames such that the inner frame forms a portion of the perimeter of the further floor.
For claim 23, the combination discloses providing an infill member (‘362 fig. 7, 170, openings 170 are covered by temporary panels which are considered the infill panels, see submitted translation) supported by the facade framework, the infill members forming at least part of the safety barrier during construction of the at least one further floor.
For claim 26, the combination discloses constructing the facade with support members (‘362 fig. 21, 200) and infill members (openings 170 are covered by temporary panels which are considered the infill panels, see submitted translation) connected to and supported by the support members; using barrier members as at least part of the infill members (temporary panels), the barrier members forming at least part of the safety barrier during construction of the at least one further floor; and subsequently removing the barrier members from the façade (the temporary panels are removed when the window is installed, see submitted translation).
For claim 34, the combination discloses constructing the facade with support elements (‘362 fig. 21, 200) and infill members (openings 170 are covered by temporary panels which are considered the infill panels, see submitted translation) connected to and supported by the support elements.
For claim 35, it would be obvious to erect the support elements in advance of the installation of the infill members since the infill members are temporary and will be removed to install the windows.
Claim(s) 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over ‘491 (WO2019006491) in view of ‘026 (FR2731026).
For claim 24, the combination does not disclose constructing the façade with support portions which extend inwardly into the structure, and forming at least one further floor with the support portions forming an extension of that floor.
‘026 discloses the obviousness of providing a façade with support portions (fig. 2, 12) which extend inwardly into the structure, and forming at least one floor with the support portions forming a horizontal and vertical extension of the floor.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the application to add support portions which extend inwardly into the structure of ‘491 and forming at least one floor with the support portions as made obvious by ‘026 to make the construction of the floor easier and reduce construction time.
For claim 25, it would be obvious to one having ordinary skill in the art to extend the support (‘026 fig. 2, 12) so that it provides a trafficable area since this merely involves increasing the length of the support.
Response to Arguments
In response to the argument that the claims of the present application are patentably distinct from claims 1-2 of the ‘696 application because claim 1 of the ‘696 application recites “the façade comprising a plurality of self-supporting modules that are secured in side by side and one on top of the other arrangement”, the examiner argues that this limitation is not a contribution over the prior art in view of ‘991 (GB2528991) as set forth in the Double Patenting Rejection above. Therefore a Terminal Disclaimer is required.
In response to the argument that ‘491 does not disclose that “the or each further floor is formed such that the floor connects with the façade”, the examiner argues that the further floor of ‘491 is connected to the façade via 205, the applicant needs to claim that the further floor is directly connected to the façade to overcome this interpretation by the examiner.
In response to the argument that the ‘491 reference does not disclose “extending the façade to increase the height of the façade to form a safety barrier for the construction of a subsequent floor above the at least one further floor”, the examiner argues that this is an obvious duplication step in view of the teachings of ‘491. ‘491 disclose erecting multiple storeys of façade (abstract) before construction of the floor and it would be obvious to one having ordinary skill to erect as many storeys as desired before adding the further floors. Moreover, previously cited reference US2020/0181905 fig. 8 also shows that erecting facades before adding the further floors is obvious to one of ordinary skill in the art.
In response to the argument that ‘491 and the present invention have different fundamentally different construction sequences, the examiner argues that there is nothing in the applicants claims that prohibits one of ordinary skill in the art from connecting the first and second modules/facades by a pivot joint and erecting the facades by rotation before constructing the further floors, therefore this argument is moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA K IHEZIE whose telephone number is (571)270-5347. The examiner can normally be reached M-F 9-5pm.
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 at 571-272-6754. 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.
/JOSHUA K IHEZIE/Primary Examiner, Art Unit 3633