DETAILED ACTION
This is a Non-final Office Action on the merits for U.S. App. 17/760,194. Receipt of the Response to the Election/Restriction filed on 10/29/2025 is acknowledged.
Claims 1-9 and 16-26 are pending.
Claims 10-15 are cancelled.
Claims 22-26 are withdrawn from consideration.
Claims 1-9 and 16-21 are examined.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9 in the reply filed on 10/29/2025 is acknowledged.
Applicant has added claims 16-26 in the amendment filed on 10/29/2025. Though claims 16-21 fall within the scope of the elected invention of the insert element elected in group I, claims 22-26 define a plastic formwork panel frame with limitations directed towards such a panel frame element. Such an invention would have properly been restricted for lack of unity under the same reasoning as provided in the Restriction requirement filed on 08/07/2025 as the shared technical feature of an insert element comprising a mounting for receiving a readable data member is known in the art and thus not a shared special technical feature. Therefore, claims 22-26 are withdrawn from consideration.
As a note, though claim 9 defines a formwork panel frame and is part of the elected invention, such a claim does not further define such a formwork panel frame structure or add any other limitation relative to the insert element of claim 1. The formwork panel frame is incidental and does not further add any further structure other than positively defining the panel frame of claim 1. Claim 9 is thus different from claim 21 as claim 21 attempts to further define the structure of the panel frame and thus add different technical features not shared between the two claims, which supports the withdrawal of such a claim set as explained above.
Drawings
The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c). No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). The file wrapper of the present application currently does not contain any drawings or figures 1-8 as noted in the specification and provided in the foreign priority document.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 16, from which claim 19 depends from, defines the insert element as the embodiment which comprises of a bushing for a threaded rod as well as a tapered mounting; however, claim 19 defines the embodiment of figures 5-7 which includes the hinge feature and pins and sockets to lock the insert closed and a mounting that is the same size along the entire length but does not comprise of such a bushing or tapered mounting nor does the originally filed specification disclose such embodiments are useable with one another. Therefore, claim 19 is considered to define new matter for combining two embodiments not otherwise previously disclosed as being useable with one another.
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 and 16-21 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.
Claims 6 and 21 each include the limitation “it,” which render such claimed inventions indefinite since multiple elements have been defined prior to use of the term “it” and one of ordinary skill in the art would not know exactly what element is being referred back to. For examining purposes and in light of the specification and drawings, “it” in claims 6 and 21 is considered to refer to the insert element.
Claim 16 defines “slot-like recess,” which renders the claimed invention indefinite since one of ordinary skill in the art would not know what scope is defined with such a term. Is such a recess just a slot or is something broader covered by such a term due to the term “like?” For examining purposes and in light of the specification and drawings, it is recommended to define the recess as comprising of a slot to clarify the structure of the recess. Moreover, claims 17-21 are rendered indefinite for depending upon independent claim 16.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 4, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roth et al. (U.S. Patent 7,347,148).
Regarding claim 1, Roth et al. disclose an insert element (#17) for insertion into a cavity of a plastic formwork panel frame (see figure 1, where such a frame is not positively defined and the insert #17 is so configured), comprising a mounting (the center cavity of element #17 and/or the drawer #18) for receiving a readable data memory (#20; see figure 3).
Regarding claim 3, Roth et al. disclose a carrier (carrier #18 can be received within the central cavity mounting of the insert element #17) having a readable data memory (#20) attached to the mounting (see figure 3).
Regarding claim 4, Roth et al. disclose the mounting is in the form of a recess in a side wall of the insert element and has a rectangular cross-section so that the carrier can be inserted into the mounting (see figure 3, where the mounting is formed by a recess formed in the longitudinal side wall of the insert #17, and comprises a rectangular cross section for receiving the rectangular carrier #18).
Regarding claim 9, Roth et al. disclose a formwork panel frame (#10) comprising an insert element as explained above in the rejection of claim 1 (see figure 1).
Claim(s) 1, 2, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nadin (U.S. Patent 5,015,013).
Regarding claim 1, Nadin discloses an insert element (the element #1 formed by segments #2 and #3) for insertion into a cavity of a plastic formwork panel frame (such a panel is not positively defined, where the insert element is configured to be inserted within a cavity as defined), comprising a mounting (the mounting formed between elements #7 and #8) for receiving a readable data memory (such a readable data memory is not positively defined, where a readable data memory is configured to be inserted within the insert element, whether it be through the conduit or another device).
Regarding claim 2, Nadin discloses a bushing (the bushing formed by elements #7 and #8) for a threaded rod for fixing the insert element in the cavity of the plastic formwork panel frame (a threaded fastener is configured to be received within the hole formed by the bushing elements #7 and #8, where such a fastener and positioning is not positively defined).
Regarding claim 7, Nadin discloses the insert element has a cross-section which widens in the longitudinal direction (see figure 3, where the insert element #1 widens from one end towards the center of the element), so that the insert element jams when inserted into the cavity of the plastic formwork panel frame (such an insert element is configured to be inserted within a cavity of a frame and jam therein due to an interference between the outer surface of the element and the cavity, thus meeting such configured to language as broadly defined).
Regarding claim 8, Nadin discloses the insert element is designed to be hinged open (see the hinge at #5).
Claim(s) 1, 2, 6, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walz (U.S. Patent 7,578,633).
Regarding claim 1, Walz discloses an insert element (#1) for insertion into a cavity of a plastic formwork panel frame (see figure 9, where such a frame is not positively defined and the insert #1 is so configured to be inserted within a plastic formwork panel frame as defined), comprising a mounting (#5) for receiving a readable data memory (such a readable data memory is not positively defined, where element #2 can be provided with a RFID chip or other element which can be mounted to mounting #5 and thus meet such limitations as broadly defined).
Regarding claim 2, Walz discloses a bushing (the upper bushing #6 with apertures #7) for a threaded rod for fixing the insert element in the cavity of the plastic formwork panel frame (a threaded fastener is configured to be received within the aperture #7 of the bushing, where such a threaded rod and positioning of the insert element within the cavity is not positively).
Regarding claim 6, Walz discloses the insert element has a rectangular cross-section or rhombic cross-section with at least one rounded corner and one flattened corner (plates #6 together form a rectangular cross section with rounded corners where apertures #7 are located and flattened corners on the opposite side of the plates #6 relative to the apertures #7, see figure 1), so that it can only be inserted into the cavity of the plastic formwork panel frame in a certain orientation relative thereto (see figures 8 and 9, where the shape of the rectangular cross-section of the insert configures the insert so that it can only be inserted into a cavity of the same shape in a specific manner, where such a cavity and positioning is not positively defined).
Regarding claim 9, Walz discloses a formwork panel frame (the frame comprising of elements #8 and #23; see figure 9) comprising an insert element according to claim 1 (see figure 9 and the rejection of claim 1 above).
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) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Roth et al. in view of Allen (U.S. Patent 6,898,864).
Regarding claim 5, Roth et al. disclose the claimed invention, including the carrier being plate-shaped as depicted in figure 3, except for the recess has a cross-section tapering in the longitudinal direction, such that the carrier jams when inserted into the mounting. However, it is highly well known in the art, as evidenced by Allen, that dovetail joints are highly well known and used in the art in order to provide a sliding connection between two elements, where the mounting channel #4 of one element can be dovetail shaped with a tapering width along its length in order to receive a dovetail projection #1 of another object that can also be tapered and thus allow for easier insertion of the two elements into one another without significantly reducing the strength of such a fit of the joint #7. See figures 1A-1B and col. 3, ll. 31-63. Therefore, it would have been obvious before the effective filing date of the claimed invention to have tapered the channel of the insert of Roth et al. along its length such that a tapered carrier can be inserted therein, as taught in Allen, in order to make installation easier and prevent improper installation of the carrier in the wrong direction.
Claim(s) 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Nadin in view of Walz (U.S. Patent 7,578,633).
Regarding claim 16, Nadin discloses an insert element (#1) for insertion into a cavity of a plastic formwork plane frame (such a panel is not positively defined, where the insert element is configured to be inserted within a cavity as defined), comprising:
a mounting (the mounting formed by elements #31 of figure 9) for receiving a readable data memory (such a memory is not positively defined, where the slot formed by the mounting elements #31 can receive a memory element as defined), the mounting being a slot-like recess (the recess formed between elements #31) in a side wall (#2f) of the insert element having a rectangular cross-section (see figure 9, where the elements #31 form a rectangular recess in cross section) such that a cuboidal or plate-shaped carrier with the readable data memory jams when inserted into the mounting (see figure 9, where a plate shaped carrier can be inserted in the mounting #31 and is stopped by element #32), and
a bushing (the bushing formed by elements #7 and #8) for a threaded rod for fixing the insert element in the cavity of the plastic formwork panel frame (a threaded rod can be inserted through the hole formed by the bushing elements #7 and #8 and attach the insert to a frame element, where such a position and elements are not positively defined).
However, Nadin does not specifically disclose the mounting tapers in the longitudinal direction so as to jam a carrier therein when inserted. It is highly well known in the art, as evidenced by Walz, that such sliding connections can be formed using dovetail shaped guide grooves which are downwardly inclined in order to fasten to guide rails #20 of another object and attach the two elements to one another through sliding action. See figures 3 and 7. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the mounting of Nadin to comprise of a tapered recess that tapers in the longitudinal direction, as taught in Walz, in order to make connection to such a mounting easier by only allowing one way of installation and preventing improper installation.
Regarding claim 17, Nadin in view of Walz render obvious the readable data memory is an RFID chip (such a chip or readable data memory is not positively defined, where a carrier with such a chip is configured to and possible to attach to the mounting of Nadin as explained above)
Regarding claim 18, Nadin in view of Walz render obvious the readable data memory is an active transponder configured for geolocation (such a transponder or readable data memory is not positively defined, where a carrier with such a transponder is configured to and possible to attach to the mounting of Nadin as explained above).
Regarding claim 19, Nadin in view of Walz render obvious the insert element is configured to be hinged open (see Nadin at #5) and comprises a hinge (Nadin; #5) connecting upper (Nadin; #3f) and lower (Nadin; #2f) portions, the lower portion including a plurality of spot pins (Nadin; #9 and #11) that engage corresponding sockets (Nadin; #14 and #16) when the insert element is closed (see figures 6 and 9 of Nadin).
Regarding claim 20, Nadin in view of Walz render obvious the insert element has a rectangular or diamond shaped cross section with a projecting nose or ledge that specifies a clear positioning of the insert element in the cavity (figure 3 of Nadin depicts the insert element #1f would similarly comprise of a central rectangular cross section with left and right noses that project in opposite directions with a reducing cross section width in order to specify a clear position of such an element within, for example, a cavity, where such a positioning is not positively defined).
Regarding claim 21, Nadin in view of Walz render obvious the insert element is shorter than the cavity into which it is inserted and, when inserted into a corner cavity of the plastic formwork plane frame, positions the readable data memory in the region of an outer corner of the frame (as explained above, such a positioning and elements (i.e. frame and memory) are not positively defined, where the insert of Nadin can be inserted within a cavity which is much longer than the insert and the insert can be positioned so that mount #21 is outwardly extending, where such claim limitations do not further define the structure of the claimed insert over that of the prior art).
Conclusion
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635