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 .
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.
Claims 63-64 are 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.
With regard to claim 63: There appears to be inadequate support for the at least one reinforcing element and the at least one embedded element individually or together fused to the insulative core with a mechanical coupling (emphasis added). As described in par. [0062] the original specification,
a reinforcing element (15) is coupled to a surface (or surfaces) of an embedded element 14 (e.g. with a mechanical coupling method (e.g. fastening, weaving or sewing mesh onto surface (or surfaces) of embedded element 14, etc.), but does not disclose mechanical coupling to the insulative core (emphasis added).
With regard to claim 64: There appears to be inadequate support for the at least one reinforcing element and the at least one embedded element individually or together fused to the insulative core via by fastening, weaving or sewing (emphasis added). As described in par. [0062] the original specification, a reinforcing element (15) is coupled to a surface (or surfaces) of an embedded element 14 (e.g. with a mechanical coupling method (e.g. fastening, weaving or sewing mesh onto surface (or surfaces) of embedded element 14, etc.), but does not disclose fastening, weaving or sewing to the insulative core (emphasis added).
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.
Claim 17 is 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 configured in the shape of “S”. Clarification is requested.
Allowable Subject Matter
Claims 1-6, 14-16 and 19-28 allowed.
The following is a statement of reasons for the indication of allowable subject matter:
In addition to the arguments submitted 12/2/25, the combination of all the elements of the claimed prefabricated building panel is not adequately taught or suggested in the cited prior art of record.
Response to Arguments
The rejection of claim 21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn in view of the amendment filed 12/2/25.
Applicant's arguments filed 12/2/25 have been fully considered but they are not persuasive.
Regarding claim 17, Applicant has amended the claim to indicate that the reinforcing element is configured to be in the shape of an “S”. It’s unclear as to how the reinforcing element is configured to be in the shape of a “S” and applicant has not provided clarification.
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 JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633
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