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 .
Response to Arguments
Applicant’s arguments, filed August 27, 2025, with respect to the rejection(s) of claim(s) 1-9 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lutes et al US Patent 10,508,946 under 35 USC 103 and a new rejection over Shaw et al US Patent 5,301,485 under 35 USC 102(a)(1).
Claim Objections
Claims 1, 2, 10, and 11 are objected to because of the following informalities: these claims recite “the pin” instead of --the grade pin-- to account for the amendment to the initial recitation. This change is required to maintain consistent wording in the claim. Appropriate correction is required.
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 1, 2, 5, 6, and 10-14 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 1 and 10 recite “a reference height” and “a set of two or more reference heights” which render the scope of the claims indefinite. These “reference heights” appear to function differently from one another, and therefore should have distinguishing nomenclature. The first “a reference height” appears to align with the top of the new cement whereas the “two or more reference heights” appear to aid in leveling with other pins, but not to be considered a top of cement line (there is no disclosure in the specification that the grade pin is set into the new concrete). Therefore, to improve clarity on the claim, these elements require distinct nomenclature to show their distinct functional and structural limitations.
Claims 2, 5, 6, and 11-14 are rejected as depending from a rejected indefinite claim.
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.
Claims 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shaw et al US Patent 5,301,485 hereinafter referred to as Shaw.
Regarding claim 10, Shaw discloses a device (30) for leveling new concrete (22), the device comprising: a grade pin (28) configured for accommodating at least a portion of a vertical support (20) extending above the new concrete; and a fastening mechanism (48) configured for fastening the pin to the vertical support at a reference height corresponding to a desired level for the new concrete (Column 7, lines 49-56), wherein the grade pin defines an axis and further defines a vertical slot formed along the axis and configured for receiving at least said portion of the vertical support (as shown on Figure 5), wherein the grade pin includes a cross section defining a perimeter for a square, a rectangle, a hexagon, an octagon, or another polygon (as shown on Figure 5, the pin has an upper cross-section that defines a polygon), and wherein, the perimeter of said square, said rectangle, said hexagon, said octagon, or said other polygon defines two or more notches or grooves (notches/grooves (46) wherein five are shown on Figures 4 and 5) configured to provide a set of two or more reference heights for determining the desired level for the new concrete (Column 7, lines 36-49).
Regarding claim 11, Examiner recognizes the claim limitation of "injection molded material" as a product-by-process claim. “Even 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 Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) see MPEP 2113. Shaw is silent as to the material, or method of making the pin, and Examiner believes that the undisclosed process of making this pin will not result in a materially different product whether explicitly calling for injection molding material or not. Applicant did not demonstrate a criticality between the process of forming the pin and the structural limitations of the pin, therefore the claim is anticipated by Shaw.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Shaw.
Regarding claim 14, Shaw discloses that the device (30) is placed over a Nelson stud in the embodiment relied upon above. However, Shaw further teaches that this device (30) can used over rebar ((112) as shown on Figure 17). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to have utilized the device (30) of Shaw over Nelson studs or rebar as taught by Shaw.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Shaw as applied to claim 10 above, and further in view of Turk US Patent Publication 2021/0123251 hereinafter referred to as Turk.
Regarding claims 12 and 13, Shaw discloses that the fastening mechanism is a pin (Column 7, lines 49-51). Shaw fails to disclose wherein this fastening mechanism is a screw or a wing nut. Turk teaches an analogous concrete leveling device (56) utilizing a grade pin (58) and fastening mechanism (62). Turk further teaches wherein a fastening mechanism (62) comprises one or more screws (threaded rod) and one or more wing nuts (knob) [0064]. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to simply substitute the pin of Shaw with a screw and wing nut of Turk to yield the predictable result of securing the grade pin to the vertical support at a desired level as taught by both Shaw and Turk.
Claims 1, 2, 5, 6, and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Turk in view of Lutes US Patent 10,508,946 hereinafter referred to as Lutes.
Regarding claim 1, Turk discloses a device (56) for leveling new concrete (32), the device comprising: a grade pin (58) configured for accommodating (as shown on Figure 6 - bore space within the body (58) and see also Figures 8 and 9) at least a portion of a vertical support (44) extending above the new concrete (see Figure 2), and a fastening mechanism (62) configures for fastening the grade pin to the vertical support [0062, 0067] at a reference height (set by laser guides [0067]) corresponding to a desired level for new concrete, wherein the grade pin comprises a cylinder (as shown at least on Figure 6) defining an axis, where the cylinder further defines a vertical slot formed along the axis of the cylinder and configured for receiving at least the portion of the vertical support (as shown on Figures 5 and 8-11, the pin will encompass at least the portion of the cylindrical vertical support).
Turk fails to disclose wherein the circumference of the cylinder defines two or more notches or grooves configured to provide a set of two or more reference heights for determining the desired level for the new concrete.
Lutes teaches an analogous grading device for new concrete (see abstract). Lutes further teaches a grade pin (104) which comprises notches or grooves (308) in order to “ensure the correct grade for the concrete slab” by adjusting the length and height of these grooves (Column 5, line 59 through Column 6, line 3). Therefore, it would have been obvious to modify the circumference of Turk to comprise annular notches as taught by Lutes to ensure proper concrete height as taught by Lutes.
Regarding claim 2, Examiner recognizes the claim limitation of "injection molded material" as a product-by-process claim. “Even 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 Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) see MPEP 2113. Turk in view of Lutes teaches a pin made of a variety of materials [0064], and Examiner believes that the undisclosed process of making this pin will not result in a materially different product whether explicitly calling for injection molding or not. Applicant did not demonstrate a criticality between the process of forming the pin and the structural limitations of the pin, therefore the claim is obvious over Turk in view of Lutes.
Regarding claims 5 and 6, Turk further teaches wherein the fastening mechanism (62) comprises one or more screws (threaded rod) and one or more wing nuts (knob) [0064].
Regarding claim 9, Turk further teaches wherein the vertical support comprises a piece of rebar [0056].
Regarding claim 10, Turk in view of Lutes teach the claimed invention (see the rejection of claim 1 above for citations and not repeated for brevity’s sake), but teach a cylindrical pin instead of the claim polygon-shaped pin. The specification of the instant application fails to denote evidence of specific function or criticality to this shape, therefore, it has been held that a change in shape would have been obvious to one having ordinary skill in the art at the time the invention was filed “absent persuasive evidence that the particular configuration of the claimed [limitation] was significant” (see MPEP 2144.04(IV)(B) referencing In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)).
Regarding claim 11, Examiner recognizes the claim limitation of "injection molded material" as a product-by-process claim. “Even 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 Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) see MPEP 2113. Turk in view of Lutes teaches a pin made of a variety of materials [0064], and Examiner believes that the undisclosed process of making this pin will not result in a materially different product whether explicitly calling for injection molding or not. Applicant did not demonstrate a criticality between the process of forming the pin and the structural limitations of the pin, therefore the claim is obvious over Turk in view of Lutes.
Regarding claims 12 and 13, Turk further teaches wherein the fastening mechanism (62) comprises one or more screws (threaded rod) and one or more wing nuts (knob) [0064].
Regarding claim 14, Turk further teaches wherein the vertical support comprises a piece of rebar [0056].
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 TARA SCHIMPF whose telephone number is (571)270-7741. The examiner can normally be reached Monday-Friday 7:30am - 3:30pm EST.
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/TARA SCHIMPF/Supervisory Patent Examiner, Art Unit 3676