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 .
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.
Examiner’s Remarks
Claim interpretation: claim 1 recites “a plurality of interlocking paving blocks”. Looking at Applicant’s Figure 11 and reading paragraph [0067], the paving blocks are simply rectangles but arranged to lie in “perpendicular orientation with respect to neighboring blocks”. Examiner therefore notes that the limitation “interlocking paving blocks” does not require any special physical structure of each paving block to cause the interlock, rather it is a limitation of the arrangement of blocks in forming a paved surface, for purposes of examination.
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 1-3, 8, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2 174 472 A (hereinafter will be referred to as “GB ‘472”) in view of CN 106759476 A (hereinafter will be referred to as “CN ‘476”), Rothmann, US 2,215,159, and Baishitong (NPL).
Regarding claim 1, GB ‘472 teaches a system for enclosing a utility line under a roadway or footway, the system comprising:
a plurality of modular walls (1, 2, 7, 8) formed from a polymer material (PVC; page 1 lines 78-81), wherein the modular walls combine to form a duct unit defining an interior volume therewithin and having open axial ends (the duct unit is disclosed as a pipe throughout the specification, pipes have open axial ends); and
one or more brackets (page 2 lines 38-39) removably (anything can be removed) fixed in the duct unit for holding the utility line within the interior volume (Figure 4).
While GB ‘472 fails to disclose that the duct unit has a rectangular-shaped cross section, CN ‘476 teaches a system for enclosing a utility line and discloses a duct unit having a rectangular-shaped cross-section (Figure 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of GB ‘472’s duct unit to have a rectangular-shaped cross-section in view of CN ‘476’s disclosure based on design choice since this is a matter of mere change in shape and it has been held that change in shape is a matter of choice that a person of ordinary skill in the art would have found obvious. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Examiner further notes that based on Applicant’s Figures 3 and 6 showing a rectangular duct unit and a round duct unit, there is clearly no criticality in the shape of the duct unit.
While GB ‘472 discloses that the duct unit can be installed under roads (page 2 lines 66-67) but fails to disclose what the road comprises, Rothmann teaches a pavement that can be used for building roads (column 1 lines 3-4) and discloses a quantity of granular base material (sand 23) and a plurality of interlocking paving blocks (Figure 1a) overlaying the granular base material, wherein the plurality of paving blocks combine to form a surface for accommodating foot or vehicular traffic. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have a quantity of granular base material overlaying the duct unit and a plurality of interlocking paving blocks overlaying the granular base material in view of GB ‘472 further disclosing that the duct unit can be installed under a road and Rothmann disclosing a way to form a road.
While the resulting combination includes PVC but fails to disclose a compressive strength property, Baishitong discloses that a basic strength parameter of PVC is a compressive strength of about 25-40 MPa. Since compressive strength by standard is measured by placing a specimen/material on a universal testing machine until it fails, it is at rupture or yield. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the PVC of the resulting combination to have a compressive strength at rupture or yield of between 24 and 49 MPa based on engineering design choice since it has been held that a prima facie case of obviousness exists when the claimed range overlaps or lies inside ranges disclosed by the prior art. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Regarding claim 2, the resulting combination includes the limitations of the claim (GB ‘472’s Figures 2-5).
Regarding claim 3, GB ‘472 shows that protrusions on the side walls are fitted into notches in opposite sides of the lid to connect the side walls and lid. While the resulting combination fails to disclose the other way around as claimed, it lacks criticality whether the sidewalls have notches or the lid has notches, since it has to be one or the other in order to have a protrusion + notch connection as suggested by GB ‘472. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the opposite sides of the lid be fitted into notches formed on the top ends of the side walls since it has been held that choosing from a finite number of predictable solutions with a reasonable expectation of success is a matter of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
It is additionally noted that GB ‘472 discloses in an alternate embodiment that opposite sides of a lid 13 are to be fitted into notches formed on the top ends of the side walls (11+15 and 12+16).
Regarding claim 8, the resulting combination includes the modular walls comprising a lower wall having a base portion and two side wall portions forming a unitary, generally U-shaped structure (bottom and sides of a rectangular shape as modified); and a lid (GB ‘472’s 8), wherein the lid is positioned on top ends of the side walls.
Regarding claim 13, the elements of the resulting combination from claim 1 make obvious the method steps claimed. Regarding the limitation of the components being laid flat and stacked on top of each other in a flat-packed configuration, the Examiner takes Official Notice that laying components flat and stacking in a flat-packed configuration is old and well-known in modular design for shipping. In view of CN ‘476 disclosing “assembling type”, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the components in a kit be laid flat and stacked on top of each other in a flat-packed configuration in order to minimize packaging and wasted space during shipping.
Regarding claim 15, the elements of the resulting combination from claims 1 and 2 make obvious the method steps claimed.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over GB ‘472 in view of CN ‘476, Rothmann, and Baishitong as applied to claim 1, further in view of CN 110273433 A (hereinafter will be referred to as “CN ‘433”).
Regarding claim 6, while the resulting combination fails to disclose the one or more brackets being removably fixed into one or more slots formed in the modular walls, CN ‘433 teaches a utility duct and discloses brackets (14) that are removably fixed into one or more slots (12) formed the walls of the duct (Figure 1 and Abstract, see English translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the one or more brackets of the resulting combination to be removably fixed into one or more slots formed in the modular walls in view of CN ‘433’s disclosure to be able to adjust the placement of the utility line for greater versatility.
Regarding claim 16, the elements from the resulting combination of claims 1 and 6 make obvious the method step claimed.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over GB ‘472 in view of CN ‘476, Rothmann, and Baishitong as applied to claim 1, further in view of Budlong, US 3,543,457.
Regarding claim 7, while the resulting combination fails to disclose one or more openings disposed through at least one of the modular walls, the one or more openings each being structured to hold and direct a utility cable or utility pipe within the interior volume, Budlong teaches a knockout liner for a utility duct and discloses that it is common to provide “knock outs” which are circular weakened areas intended to be knocked out to form openings for utility conduits since it is not always known in advance where to route the conduits (column 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to include one or more openings disposed through at least one of the modular walls, the one or more openings each being structured to hold and direct a utility cable or utility pipe within the interior volume in view of Budlong’s disclosure in case one or more of the utility cables or pipes need to be rerouted.
Claims 10-11 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over GB ‘472 in view of CN ‘476, Rothmann, and Baishitong as applied to claim 1, further in view of De Valdivielso, US 10,240,303 B2.
Regarding claim 10, the resulting combination includes the granular base material including a quantity of bedding sand (which is sand). While the resulting combination fails to disclose a quantity of base course, De Valdivielso teaches a pavers to form a paved surface and discloses that a conventional paver base system includes a sand layer over an aggregate layer (Figure 2, sand layer 30, aggregate layer 32). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the granular base material of the resulting combination to include a quantity of bedding sand (which is sand) and a quantity of base course (aggregate) in view of De Valdivielso’s disclosure that such is a conventional base system for pavers.
Regarding claim 11, while the resulting combination fails to disclose the limitation claimed, the Examiner took Official Notice in the office action dated 5/22/2024 that a Class A aggregate base course with a California Bearing Ratio (CBR) value of 100 percent is old and well-known. Applicant failed to challenge the Official Notice in their arguments. Under the guidelines of MPEP 2144.03, to adequately traverse Official Notice, an applicant must specifically point out the supposed errors in the Examiner’s action including stating why the noticed fact is not considered to be common knowledge or well-known in the art. A general allegation that the claims define a patentable invention without any reference to the Examiner’s assertion of Official Notice would be inadequate. Since applicant did not adequately traverse the Examiner’s assertion of Official Notice, the facts are now considered to be admitted prior art (MPEP 2144.03). Applicant’s traversal is considered inadequate because there was no reference to the Examiner’s assertion of Official Notice. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the base course to be a Class A aggregate base course with a California Bearing Ratio (CBR) value of 100 percent since it is known in the art to ensure the strength of the aggregate.
Regarding claim 17, the elements from the resulting combination from claims 1 and 10 make obvious the method steps claimed.
Claims 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over GB ‘472 in view of CN ‘476, Rothmann, and Baishitong as applied to claim 1, further in view of KR 100730517 B1 (hereinafter will be referred to as “KR ‘517”).
Regarding claim 9, while the resulting combination fails to disclose a polymer plate, KR ‘517 discloses a synthetic resin plate 11 around the outer surface of an underground utility duct 1 (Figures 5 and 6 and bottom half of page 3 of English translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the duct unit of the resulting combination to have an outer layer comprising a polymer plate (synthetic resin plate) in view of KR ‘517’s disclosure to protect it from damage from external forces and increase stiffness. The resulting combination includes a polymer plate being disposed between the duct unit and the granular base material.
Regarding claim 18, the elements from the resulting combination of claims 1 and 9 make obvious the method step claimed. The resulting combination includes overlaying a polymer plate over the duct unit (as KR ‘517 discloses that polymer plate 11 is part of 10, all of which is outside of a utility duct 1), between the duct unit and the granular base material.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over GB ‘472 in view of Rothmann, US 2,215,159, Baishitong (NPL), and KR ‘517.
Regarding claim 20, GB ‘472 teaches a system for enclosing a utility line under a roadway or footway, the system comprising:
a plurality of modular walls (1, 2, 7, 8) formed from a polymer material (PVC; page 1 lines 78-81), wherein the modular walls combine to form a duct unit defining an interior volume (Figures 2-5).
While GB ‘472 discloses that the duct unit can be installed under roads (page 2 lines 66-67) but fails to disclose what the road comprises, Rothmann teaches a pavement that can be used for building roads (column 1 lines 3-4) and discloses a quantity of granular base material (sand 23) and a plurality of interlocking paving blocks (Figure 1a) overlaying the granular base material, wherein the plurality of paving blocks combine to form a surface for accommodating foot or vehicular traffic. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify GB ‘472 to have a quantity of granular base material overlaying the duct unit and a plurality of interlocking paving blocks overlaying the granular base material in view of GB ‘472 disclosing that the duct unit can be installed under a road and Rothmann disclosing a way to form a road.
While the resulting combination includes PVC but fails to disclose a compressive strength property, Baishitong discloses that a basic strength parameter of PVC is a compressive strength of about 25-40 MPa. Since compressive strength by standard is measured by placing a specimen/material on a universal testing machine until it fails, it is at rupture or yield. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the PVC of the resulting combination to have a compressive strength at rupture or yield of between 24 and 49 MPa based on engineering design choice since it has been held that a prima facie case of obviousness exists when the claimed range overlaps or lies inside ranges disclosed by the prior art. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
While the resulting combination fails to disclose a polymer plate, KR ‘517 discloses a synthetic resin plate 11 around the outer surface of an underground utility duct 1 (Figures 5 and 6 and bottom half of page 3 of English translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the duct unit of the resulting combination to have an outer layer comprising a polymer plate (synthetic resin plate) in view of KR ‘517’s disclosure to protect it from damage from external forces and increase stiffness. The resulting combination includes a polymer plate separate from and overlaying the duct unit (as KR ‘517 discloses that polymer plate 11 is part of 10, all of which is outside of a utility duct 1).
Regarding claim 21, while the resulting combination fails to explicitly disclose the limitation of the claim, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the polymer plate be formed of the same polymer material that forms the modular walls for manufacturing convenience since it has been held that selection of a known material based on its suitability for its intended use is a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Response to Arguments
Applicant’s arguments with respect to claims 1-3, 6-8, 10-11, 13, and 15-17 have been considered but are moot because the arguments pertain to Applicant’s newly-added limitation of the duct unit having a rectangular-shaped cross-section. This newly-added limitation been addressed in the rejection above.
Applicant’s arguments with respect to claims 9, 18, and 20-21 are not persuasive. Applicant argues that KR ‘517 teaches a polymer coating that is attached during curing of the underlaying concrete substrate “whereas the claimed polymer plate is a separate, stand alone plate structure”. This is not found to be persuasive since KR ‘517 discloses it as a “synthetic resin plate” to maintain the stiffness and to protect the duct unit from external forces as disclosed in the bottom half of page 3 of the English translation. It meets the claim limitation of “separate from and overlaying” a duct unit, as KR ‘517 shows the duct unit 1 with plate 11 being part of 10 which is outside of and overlaying a duct unit 1.
Applicant argues (bottom of the page numbered “9” through the first full paragraph on page “10”) that none of the cited references describe or suggest the components being flat-packed into a kit. The rejection has been clarified above to include the method step of stacking and flat-packing being old and well-known to minimize packaging and wasted space during shipping.
In the last paragraph of the page numbered “15” of the arguments, Applicant argues that one skilled in the art would not have been motivated to combine the prior art. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, GB ‘472 was relied on in the rejection because it teaches a system for enclosing a utility line under a roadway which is in the art of utility ducts; Rothmann’s landscape pavement was relied on in the rejection because GB ‘472 discloses the utility duct to be underneath a roadway which would require a pavement; Baishitong was relied on in the rejection because it teaches PVC properties and the resulting combination includes PVC; CN ‘433 was relied on in the rejection because it teaches a system for enclosing a utility line and using brackets, which is in the art of utility ducts; Budlong was relied on in the rejection for teaching a utility duct with knock outs for holding pipes which is in the art of utility ducts; De Valdivielso was relied on in the rejection for teaching a paver base system because the resulting combination includes pavers over the utility duct; and KR ‘517 was relied on in the rejection for teaching a polymer plate separate from and overlaying a utility duct which is in the art of utility ducts. Applicant also argues against the use of Bradsfield, however Bradsfield is no longer relied on since Applicant canceled claims 4 and 5.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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/KATHERINE J CHU/ Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/ Supervisory Patent Examiner, Art Unit 3671
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