DETAILED ACTION
Response to Amendment
Amendments, filed on July 7, 2025, have been entered in the above-identified application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Examiner’s Comments
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 8 and 10 - 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,197,399 B2 (the parent Application) in view of Cordes (U.S. Patent No. 11,665,870 B2).
Regarding new claim 21, the Examiner takes Official Notice that acrylic adhesives are conventional adhesives, including in the shielding arts, and are deemed functional equivalents to the generically disclosed adhesives in Cordes1.
Claim Objections
Claims 3, 4 and 16 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.
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 of this title, 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, 2, 5 – 8, 10 - 15 and 17 – 21 are rejected under 35 U.S.C. 103(a) as being unpatentable over Cordes (U.S. Patent No. 11,665,870 B2) in view of Toshihiro et al. (JP 2002-050890 A) for the reasons of record as set forth in Paragraph No. 8 of the Office Action mailed on April 8, 2025. See provided Machine Translation of JP ‘890 A for paragraph citations.
Regarding new claim 21, the Examiner takes Official Notice that acrylic adhesives are conventional adhesives, including in the shielding arts, and are deemed functional equivalents to the generically disclosed adhesives in Cordes2.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claims 3, 4 and 16 remain allowable for the reasons previously set forth.
Response to Arguments
The rejection of claims under Double Patenting
Applicants’ arguments have been considered but are not found persuasive for the reasons set forth below.
The rejection of claims under 35 U.S.C § 103(a) – Cordes in view of Toshihiro et al.
Applicant(s) argue(s) that there is no teaching or suggestion to secure the individual outer walls and inner walls (e.g. between “Mary” and “Lucy” in Figure 2T). The Examiner respectfully disagrees.
Applicant(s) are reminded that “the test for obviousness is not whether features of the secondary reference may be bodily incorporated into the primary reference’s structure, nor whether the claimed invention is expressly suggested in any one or all of the references, rather the test is what the combined teachings would have suggested to those of ordinary skill in the art.” Ex parte Martin 215 USPQ 543, 544 (PO BdPatApp 1981). In the instant case (and as set forth in the prior rejection of record on page 5, 3rd and 4th full paragraphs), the combined teachings of Cordes and Toshihiro et al. would clearly lead a skilled artisan to readily envision securing the inner and outer walls to each other by a variety of means, including the disclosed use of adhesives to secure the panels to each other. Securing two VERTICAL panels to each other would have been obvious to a skilled artisan for the reasons set forth in the rejection of record, since it would have been obvious to desire a secure wall. While the Examiner acknowledges that this ‘securing’ “Mary” and “Lucy” (e.g.) together could be accomplished by a wide variety of means; screws, nails, clamps, bolts, etc., the Cordes reference _explicitly_ mentions using adhesives. The use of adhesives would also have been obvious as both references talk about the desire to minimize breaks in the shielding material, which would have occurred by using any fastening means that requires forming a hole, etc. through the wall. Adhesives do not require a hole and are also materials that can serve as additional dielectric layers (as taught in Cordes), providing additional shielding. As such, the Examiner maintains that it would have been obvious to use an adhesive between the inner and outer walls; e.g. the “Mary” and “Lucy” panels, for example, as securing the walls together would have provided a strong wall and good shielding, both of which are taught in Cordes as being the design intent of the disclosed invention.
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.
Applicants’ amendment resulted in embodiments not previously considered (i.e. addition of claim 21) which necessitated the new grounds of rejection, and hence the finality of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
August 20, 2025
1 For support of the Examiner’s position of Official Notice, see newly cited prior art to Camacho et al. (‘916 A1), Paragraph 0050.
2 For support of the Examiner’s position of Official Notice, see newly cited prior art to Camacho et al. (‘916 A1), Paragraph 0050.