DETAILED ACTION
This is a non-final Office Action on the merits for U.S. App. 18/034,506. Receipt of the RCE, amendments, and arguments filed on 07/02/2025 is acknowledged.
Claims 18-35 are pending.
Claims 1-17 are cancelled.
Claims 18-35 are examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/02/2025 has been entered.
Claim Objections
Claim 19 is objected to because of the following informalities: claim 19 defines “of the joists of the non-load bearing element” which instead should define --of joists of the non-load bearing element-- since such joists have not been previously defined. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The limitation “means to retain services” of claim 22 is considered to invoke 35 U.S.C. 112(f) since such limitations are only defined in terms of function and does not comprise of sufficient structure.
Claim Rejections - 35 USC § 112
Applicant’s amendments to the claims overcome the 35 U.S.C. 112(b) rejections of the previous Office Action. Therefore, the 35 U.S.C. 112(b) rejections of the previous Office Action are withdrawn.
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 21 and 27-35 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.
Claim 21 defines “the non-load bearing elements,” which renders the claimed invention indefinite since only a single “non-load bearing element” is defined in claim 18, from which claim 21 depends from and thus one of ordinary skill in the art would not know whether such limitations now define a plurality of such non-load bearing elements are required or whether non-load bearing elements separate from the single element defined in claim are being defined. For examining purposes and in light of the specification and drawings, claim 21 is considered to further define that the single non-load bearing element is instead a plurality of non-load bearing elements.
Claim 27 defines “the web being open to allow the services to pass,” which renders the claimed invention indefinite since claim 27 depends from claim 22 and one of ordinary skill in the art would not know whether such an open web of claim 27 forms the “means to retain services” of claim 22 and whether “the services” of claim 27 refers to the pipework and/or cabling of claim 18 or whether other services are being defined in such an instance. For examining purposes and in light of the specification and drawings, the open web of claim 27 is considered to form the means to retain services of claim 22 and the services are considered the pipework and cabling of claim 18. Moreover, claims 28-35 are rendered indefinite for their dependencies upon claim 27
Claim 28 defines “service supports,” which renders the claimed invention indefinite since claim 28 depends from claim 22, which defines “means to retain services” and thus one of ordinary skill in the art would not know whether such limitations of claim 28 further define the means of claim 22 or whether such service supports are a separate element relative to the “means to retain services.” For examining purposes and in light of the specification and drawings, the service supports of claim 28 are considered to further define the means to retain services of claim 22.
Claim 29 defines “the services are incorporated into the joists” which renders the claimed invention indefinite since claim 18, form which claim 29 depends from, already defines pipework and/or cabling provided within the cassettes in the method steps and thus one of ordinary skill in the art would not know whether such services are separate and different from such pipework and/or cabling or whether such services are provided by such pipework and/or cabling. For examining purposes and in light of the specification and drawings, such services are considered provided by such pipework and/or cabling of claim 18.
Claim 35 defines “they,” which renders the claimed invention indefinite since multiple elements have been defined prior to use of the term “they” and one of ordinary skill in the art would not know what element is exactly being referred back to. For examining purposes and in light of the specification and drawings, “they” of claim 35 is considered to refer back to the joists.
As a note, all the other 35 U.S.C. 112(b) rejections of the previous Office Action have been overcome by Applicant’s amendments to the claims and thus are withdrawn.
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) 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Studebaker et al. (U.S. Publication 2010/0275544) in view of Wegler (WO 98/48123), Zhang (WO 2015043310), and DE ‘003 (DE19848003).
Regarding claim 18, Studebaker et al. disclose forming a floor cassette comprising a profiled steel deck (decking #180 is constructed from steel, see paragraph 57, where such a decking can be considered to comprise of elements #112 and #201); a layer of set concrete (#120) on top of the profiled steel deck (see figure 17); wherein the steel deck and concrete form a self-supporting structural component (the floor assembly is configured to form a self-supporting structure component, where the end of the cassette is to be supported upon a support structure #101 as depicted in figure 17); and a non-load bearing element (the non-load bearing element formed by elements #111 and #118 of figure 17, where such an element of figure 17 is not directly supported by a support structure or supported from below so as to be considered non-load bearing as defined) only attached to the opposite side of the steel deck from the concrete (see figure 17, where such a non-load bearing element is only attached to the bottom surface of the steel deck relative to the concrete, which is on a top surface thereof), where a building frame (#101) is built on a building site where the building is to be formed and the flooring cassette is installed on such a building frame such that the structural component comprising of the deck and concrete is supported upon the building frame (as depicted in figure 17). However, Studebaker et al. do not specifically disclose the cassette is formed at a factory and shipped to the building site, or running pipework and/or cabling through the openings, or specifically installing a flooring above the concrete layer.
Wegler teaches a building construction method which comprises of floor cassettes #4/5 which comprise of a concrete floor #4/5 and joists #6 that extend thereunder, where the floor cassettes are formed prefabricated or cast on site. See page 23, ll. 27-52. When such floor cassettes are prefabricated, they are lifted into position and supported on wall supports #2 at their appropriate location. See figures 6 and 9a and page 9, ll. 29-35. Page 23, ll. 27-34 of Wegler teaches that both prefabrication and forming in-situ of such concrete floor structures is known and can be interchanged for one another to yield the same end result of a concrete floor structure suspended between wall supports. Therefore, it would have been obvious before the effective filing date of the claimed invention to have prefabricated the flooring of Studebaker et al. and transported it to the job site to be lifted into place on the support structure, as taught in Wegler, since Wegler teaches that such floor cassettes can be formed in-situ or prefabricated and still meet the final building construction, where such prefabrication allows for more consistent and repeatable construction and allows for quicker erection of the building without having to wait for concrete to harden.
Furthermore, Studebaker et al. disclose the use of openings that are configured to receive services within the joists but do not specifically disclose services incorporated and included within such joists of the cassette. It is highly well known in the art, as evidenced by Zhang, that flooring systems that comprise of joists #2 which comprise of diagonal members that form openings therebetween, where such openings allow for pipes or wire joint #4 to extend out of the floor area and connect to floor to external services. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the floor assembly of Studebaker et al. to comprise of services received within the joists of the cassette, as taught in Zhang, in order to allow utilities to pass through the floor system and allow for electricity or plumbing to be placed where needed within the building.
Finally, though Studebaker et al. do not specifically disclose a flooring installed above the concrete layer, it is highly well known in the art, as evidenced by DE ‘003, that such concrete floors with a concrete slab #8 and joist #9 can have tiles #20 or carpet #21 applied over the concrete slab layer. See figure 1. Therefore, it would have been obvious before the effective filing date of the claimed invention to have applied a finishing flooring layer to the top of the concrete layer of Studebaker et al., as taught in DE ‘003, in order to provide an aesthetic floor surface for inside of the building as needed by the end user.
Regarding claim 19, Studebaker et al. in view of Wegler, Zhang, and DE ‘003 render obvious attaching ceiling panels to a lower flange of the joists of the non-load bearing element (figure 2A of Studebaker et al. depicts ceiling panels #195 can be attached to the lower chord #111 of the joists, where it would have been obvious to have similarly provided such features within the embodiment of figure 17 in order to properly form a ceiling in the enclosed space below the floor system to provide an aesthetic covering for the support structure thereabove).
Regarding claim 20, Studebaker et al. in view of Wegler, Zhang, and DE ‘003 render obvious the non-load bearing element is provided by insulation (The embodiment of figure 2A of Studebaker et al. depicts the user of a ceiling #195 which can be attached to the bottom chord #111 of the joists of the cassette, where paragraph 38 of the English translation of Zhang discloses such ceilings can be constructed from gypsum board or fireproof panels, thus providing fire insulation to such an area. Therefore, it would have been obvious before the effective filing date of the claimed invention to have attached insulation to the opposite side of the steel deck of the cassette relative to the concrete, such as by using gypsum or fireproof ceiling panels as taught in Zhang, to the embodiment of figure 17 of Studebaker et al. in order to provide a more aesthetic lower space by covering the structural elements of the floor above and also provide fire insulation to the structure as needed by building code. For rejection purposes of claim 20, such a ceiling with fireproof panels can be considered the non-load bearing element of claim 18 since it is positioned as defined, where claim 18 does not provide any further structure or function for such a non-load bearing element.).
Regarding claim 21, Studebaker et al. in view of Wegler, Zhang, and DE ‘003 render obvious the profiled steel deck has a plurality of ridges (the ridges of the deck #180 that extend into the page of figure 17 of Studebaker et al.) and wherein the non-load bearing elements run traverse to the rides (see figure 17 of Studebaker et al., where the elements #118 and #111 run left and right of the figure and thus transverse to the extension of the corrugated ridges of the deck #180).
Regarding claim 22, Studebaker et al. in view of Wegler, Zhang, and DE ‘003 render obvious means to retain services on the non-load bearing element (the openings between diagonals #118 of Studebaker et al. are considered the means for retaining services as defined).
Regarding claim 23, Studebaker et al. in view of Wegler, Zhang, and DE ‘003 render obvious the means to retain services on the non-load bearing element is in the form of openings through the non-load bearing element (see figure 17 of Studebaker et al. and the explanation above).
Regarding claim 24, Studebaker et al. disclose a weld mesh (Studebaker et al.; #125, see paragraph 63) is embedded in the concrete layer (see figure 1 of Studebaker et al., where the mesh of figure 17 would be similarly positioned).
Claim(s) 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Studebaker et al. in view of Wegler, Zhang, DE ‘003, and Durst (U.S. Patent 4,109,859).
Regarding claim 25, Studebaker et al. in view of Wegler, Zhang, and DE ‘003 render obvious the claimed invention except for a layer of insulating board above the concrete layer. However, it is highly well known in the art, as evidenced by Durst, that concrete floors #3 can be constructed with an insulation board #2 on top thereof, where a heating layer #10 with heating tubes #8 is provided on top of the insulation board #2 in order to provide a heated floor covering. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the floor system of Studebaker et al. to comprise of an insulation board on top of the concrete layer of the floor, as taught in Durst, in order to provide insulation and a heating floor surface thereon.
Regarding claim 26, Studebaker et al. in view of Wegler, Zhang, DE ‘003, and Durst render obvious an under floor heating layer on top of the insulating board layer (see figure 6 of Durst, which depicts a heating layer #10 with heating tubes #8 above the insulation board #2, where such features would be provided within Studebaker et al. as explained above).
Allowable Subject Matter
Claims 27-35 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims as well as to overcome the 35 U.S.C. 112(b) rejections above.
Response to Arguments
Applicant's arguments filed 07/02/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that “the shoe 170 [in Studebaker et al.] is part of the truss structure precisely because the deck and concrete do not form a self-supporting structure,” in view of Applicant’s amendments to the claims, the non-load bearing element of Studebaker has been interpreted to instead comprise of the angled web #118 and lower joist #111 of the assembly, where such an element is only attached to the bottom surface of the profiled steel deck, which deck is considered to comprise of corrugated panel #180 along with spaced apart joists #112 and plates #201 attached to seats #170 of the joists #112. Such a “profiled steel deck” limitation does not preclude use of other elements integrally formed or attached to the corrugated panel #180 nor does the claim limitations provide any further structure for what such a profiled steel deck is to comprise. Similarly the non-load bearing element as broadly defined in the claimed invention can be interpreted to only comprise of elements #118 and #111 of Studebaker, as such elements are not supported from below and are only attached to the joist #112 of the self-supporting structural component on an opposite side of such a deck relative to the concrete top #120. Since such an interpretation of Studebaker meets each and every feature of the claimed invention as broadly defined, the claimed invention is thus considered obvious.
Regarding Applicant’s arguments that the bearing plate #201 of Studebaker is an extension of the joist shoe #170 of the upper joist #112, such arguments are persuasive. The upper joist #112 is supported at its ends by the shoe #170 and plate #201 on the support structure #101 and thus provides certain load bearing features to the assembly. Therefore, when claim 27 defines such a non-load bearing element comprises a plurality of joists which comprise of upper and lower flanges, Studebaker cannot be considered to comprise of such an upper flange which is not load bearing and thus such claims are objected to for being allowable but depending from a rejected base claim as explained above.
Regarding Applicant’s arguments that Studebaker shows several fasteners #130 and #135 that “must necessarily be in place before the concrete is poured,” yes, fasteners #130 are required to be attached through the steel deck #180 and into the upper chord #112 such that the concrete can encapsulate the tops of such fasteners #130. However, such features would still be present whether such concrete is poured in-situ or in a factory as the fasteners would be encapsulated in either situation and need not be attached to anything at the jobsite after the concrete is set. With respect to fasteners #135 of figure 17 of Studebaker, figure 15 of Studebaker shows such a fastener is not required in all situations for attaching the plate #201 of the cassette to ta support structure and Wegler depicts in figures 5, 6, and 11B how such prefabricated cassettes can be provided upon the support structure and attached thereto as needed. Therefore, in view of the prior art of record, one of ordinary skill in the art would not understand how to attach such prefabricated panels of Studebaker in view of Wegler to a support structure as needed when such panels are shipped and lifted in place to a jobsite as taught in Wegler. The rejections are considered proper and are upheld.
Regarding Applicant’s arguments that Wegler does not teach the entire cassette is formed offsite at a factory and instead the concrete is to be poured in-situ, page 23, ll. 27-34 of Wegler teach that the floor structure element, which is that as depicted in figure 5, can be prefabricated and thus formed at a factory and shipped to the jobsite so as to be raised as a whole and mounted in place or can be cast on site. Furthermore, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Even though Wegler teaches that such floor structures can be poured in-situ or can be a combination of partly prefabricated and partly cast on site (see page 9, ll. 35-40, Wegler teaches alternatives in such a passage to the preferred embodiment of Wegler which teaches the floor elements are prefabricated, where such a teaching of Wegler that discloses such floor elements can be either prefabricated or poured in-situ provides support for the obviousness of prefabricating the cassette of Studebaker et al. since both of such methods are known and interchangeable with one another. The rejections are thus considered proper and are upheld.
Conclusion
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635