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 .
Election/Restrictions
Applicant's election with traverse of Species I in the reply filed on 3/7/25 is acknowledged. The traversal is on the ground(s) that that the election of species pertaining to Species I – Species VII (as renumbered by applicant) is improper in this case since a comprehensive search of relevant art should encompass the species recited to all of these species. Applicant submits that an election of species is unwarranted under 35 USC 121, which requires the claims to be directed to “two or more independent inventions.”
This is not found persuasive because a search of all the species is not limited solely to a classification search, but may include different text and search queries in addition to backward/forward search of relevant prior art. Applicant submits that each of the species are independent and distinct from another as the ends of the respective panels are different from another, where the configuration of the ends including, but not limited to the disposition of the embedded elements and the shape and thickness at the ends of the panels. Note that applicant does not state the species are obvious variants of one another. As stated in the restriction requirement, upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-12 and 29-62 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/27/25.
Claim Rejections - 35 USC § 112
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 17 and 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.
With regard to claim 17: it’s unclear as to how the reinforcing element is S-shaped. Clarification is requested.
With regard to claim 21: It’s unclear if the claimed “cementitious material” is referencing one of the cementitious materials of claim 1.
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) 1-4 and 25-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gibson (US 2016/0208489 A1).
With regard to claim 1: Gibson discloses a prefabricated building panel (108) (figs. 14-23B), the panel (108) comprising:
a rigid insulative core (124) having first and second opposing surfaces (opposing major surfaces) (fig. 23B; par. [0055]);
a first cementitious material (160) at least partially covering the first surface of the insulative core (124) (fig. 23B);
a second cementitious material (164) at least partially covering the second surface of the insulative core; and
at least one embedded element (126) extending at least partially along a peripheral edge of the insulative core (124) (fig. 23B).
With regard to claim 2: Gibson discloses that the at least one embedded element (126) extends at least partially between the first and second opposing surfaces (opposing major surfaces) (fig. 23B).
With regard to claim 3: Gibson discloses that the at least one embedded element (126) is a metal channel (fig. 23B; par. [0057]). Gibson further discloses that the at least one embedded element (126) may be fabricated from other materials, such as wood or polymers (par. [0057]).
With regard to claim 4: Gibson discloses that the at least one embedded element (126) is generally C-shaped and comprises a wall section (web) and an open end defining a channel (fig. 23B).
With regard to claim 25: Gibson discloses the at least one embedded element (126) stiffens the panel (108) along the peripheral edge (fig. 23B).
With regard to claim 26: Gibson discloses that the at least one embedded element (126) may be fabricated from other materials, such as polymers (par. [0057]), which is capable of being a thermal break between the first and second opposing faces (fig. 23B).
With regard to claim 27: The at least one embedded element (126) of Gibson at least partially encloses the insulative core (124) (fig. 23B). As Gibson discloses the structure of the claimed panel, the at least one embedded element (125) of Gibson at least partially enclosing the insulative core would enhance the fire resistance of the panel.
With regard to claim 28: Gibson discloses that the insulative core (124) is thinner on one side (at in-turned lips of 126) of the peripheral edge than the other side (at web of 126) of the peripheral edge (fig. 23B).
Claim(s) 1-3, 13-15, 17-18, 21-26 and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Messenger et al. (US 2003/0167716 A1).
With regard to claim 1: Messenger et al. discloses a prefabricated building panel (2) (figs. 1-2), the panel (2) comprising:
a rigid insulative core (4) having first and second opposing surfaces (major surfaces) (fig. 1);
a first cementitious material (14, interior concrete layer) at least partially covering the first surface of the insulative core (2) (figs. 1-2; par. [0032]);
a second cementitious material (16, exterior concrete layer) at least partially covering the second surface of the insulative core (2) (figs. 1-2; par. [0032]); and
at least one embedded element (20, embedded utility conduit) extending at least partially along a peripheral edge of the insulative core (2) (figs. 1-2; par. [0033]).
With regard to claim 2: Messenger et al. discloses that that the at least one embedded element (20, embedded utility conduit) extends at least partially between the first and second opposing surfaces (major surfaces of the insulative core 4) (figs. 1-2).
With regard to claim 3: Messenger et al. discloses that the at least one embedded element (20) is PVC (par. [0033]).
The PVC being an “extrusion” is considered a product by process limitation.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
With regard to claim 13: Messenger et al. discloses at least one reinforcing element (6, 8 and/or 10) located proximate to the at least one embedded element (20) to strengthen the panel in the vicinity of the at least one embedded element (20) (figs. 1-2).
With regard to claim 14: Messenger et al. discloses that the thickness of the insulative core (4) is reduced in a first region of the panel in the vicinity of the embedded element (20) in comparison to a second region of the panel removed from the embedded element (20) (fig. 2). Note that the thickness of the insulative core (4) is less at the height of the embedded element (20) compared to the remainder of the insulative core (4) (figs. 1-2).
With regard to claim 15: Messenger et al. discloses that the at least one reinforcing element (6, 8 and/or 10) is a wire mesh (par. [0037]).
With regard to claim 17: As best understood, Messenger et al. discloses that the reinforcing element (10) is generally S-shaped (zig-zag configuration) (figs. 1-2).
With regard to claim 18: Messenger et al. discloses that the at least one reinforcing element (6, 8 and/or 10) and the at least one embedded element (20) are individually or together fused to the insulative core (4) (fig. 2).
With regard to claim 21: Messenger et al. discloses that the at least one reinforcing element (6, 8 and/or 10) and the at least one embedded element (20) are individually or together fused to the insulative core (4) with a cementitious material (14, 16) (fig. 2).
With regard to claim 22: Messenger et al. discloses that the at least one reinforcing element (6, 8 and/or 10) extends into one or more of the first cementitious material (14) and the second cementitious material (16) in the vicinity of the at least one embedded element (20) (figs. 1-2).
With regard to claim 23: Messenger et al. discloses that the at least one reinforcing element (6, 8 and/or 10) extends between the first cementitious material (14) and the second cementitious material (16) (figs. 1-2).
With regard to claim 24: Messenger et al. discloses that the first region of the panel (2) is capable of being flush-mounted to a support structure.
With regard to claim 25: Messenger et al. discloses the at least one embedded element (20) is capable of stiffening the panel along the peripheral edge (figs. 1-2).
With regard to claim 26: Messenger et al. discloses the at least one embedded element (20) is PVC (par. [0033]), which is capable of being thermal a break between the first and second opposing faces.
With regard to claim 28: Messenger et al. discloses the insulative core (4) is thinner on one side of the peripheral edge than the other side of the peripheral edge (figs. 1-2).
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) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gibson (US 2016/0208489 A1).
With regard to claims 5-6: Gibson discloses that the at least one embedded element (126) is a metal channel (fig. 23B; par. [0057]). Gibson further discloses that the at least one embedded element (126) may be fabricated from other materials, such as wood or polymers (par. [0057]).
Gibson does not disclose that the at least one embedded element comprises a fibreglass channel or fibreglass extrusion.
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have good reason to pursue the known options within his or her technical grasp, as the selected option was one of a finite number of available materials that is cost effective, lightweight, and durable. No new or unpredictable results would be obtained from modifying the panel to include at least one embedded element comprising fiberglass in order reduce the cost of panel. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Claim(s) 16 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Messenger et al. (US 2003/0167716 A1).
With regard to claim 16: Messenger et al. does not disclose that the wire mesh is selected from the group consisting of a welded wire mesh, an epoxy coated wire mesh, and a glass mesh.
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have good reason to pursue the known options within his or her technical grasp, as the selected option was one of a finite number of available wire meshes in order to provide a desired degree of reinforcement. No new or unpredictable results would be obtained from modifying the wire mesh of Messenger et al. to be a known wire mesh such as welded wire mesh, an epoxy coated wire mesh, and a glass mesh in order to provide a desired degree of reinforcement. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
With regard to claim 19: Messenger et al. discloses that the at least one reinforcing element (6, 8 and/or 10) fused to the insulative core (4) with an adhesive (claims 7-8).
Messenger et al. does not disclose that the at least one embedded element (20) are individually fused to the insulative core (4) with an adhesive or other bonding agent.
However, 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 panel of Messenger et al. to also have the at least one embedded element individually fused to the insulative core with an adhesive in order to provide securement to the insulative core for mitigating unwanted displacement. No new or unpredictable results would be obtained from having the at least one embedded element fused to the insulative core with an adhesive.
With regard to claim 20: Messenger et al. discloses that the at least one reinforcing element (6, 8 and/or 10) fused to the insulative core (4) with an adhesive (claims 7-8).
Messenger et al. does not disclose that the at least one reinforcing element and the at least one embedded element are individually or together fused to the insulative core with an epoxy resin.
However, 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 panel of Messenger et al. to have the at least one reinforcing element and the at least one embedded element individually fused to the insulative core with an epoxy resin in order to provide securement to the insulative core for mitigating unwanted displacement. No new or unpredictable results would be obtained from have the at least one reinforcing element and the at least one embedded element fused to the insulative core with an epoxy resin.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited is directed to insulative panels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached on (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633