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 .
The examiner respectfully disagrees with the applicant’s position, however, the applicant’s disparaging remarks are unnecessary for prosecution. See examiner’s comments and remarks below.
Drawings
The drawings are objected to because they fail to include reference numbers which correlate with the specification to provide a description of individual components. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, every claimed structural component must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Although the parts of the invention may be shown in the figures, due to the fact that each individual element is not denoted with a specific reference number, the examiner is not certain as to which element constitutes which element in the specification. Drawings are to be provided so that one can understand the invention. One should not have to guess as to which part is what. Again, the applicant needs to provide reference numbers for the various pieces of the claimed invention in order for the examiner to have a complete and clear understanding of applicant’s claimed invention.
Additionally, please refer to 1.84 (u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1 and 4 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. The claims include added limitations are not supported by the disclosure. For example, “rather than, having wall enclosing the pre-fabricated and pre-engineered skeletal assembled frame or having non-structural dividing walls in between sections of the assembled frame” and “configured to verify a pre-engineered structural integrity of the assembled frame and eliminate a need to recertify the assembled frame at the construction site” are not supported in the specification.
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 1-7, 18-20 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 1 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: The claimed building blocks (Figures 8 through 11) are not shown or described to provide a basic understanding of how they operate together or within the frame (100) itself. Appropriate correction is required.
Regarding claim 1, it is unclear if the building is intended to be positively claimed. The examiner will examine as best understood with only the subcombination of the assembled frame positively claimed. Appropriate correction is required.
Regarding claim 6, the claim is comprised of method steps. A claim that recites both a system (or apparatus) and a method of using that system (or apparatus) does not apprise one of ordinary skill in the art of its scope, and thus, is indefinite under 35 U.S.C. § 112, second paragraph. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005) (holding that a claim that recites both a system and the method for using that system does not apprise a person of ordinary skill in the art of its scope); see also MPEP § 2173.05(p)(ID (“A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite... .”). The claim will be examined for the final product, i.e. a frame having the dimensions to fit where it is intended to fit.
Regarding claim 18, it is unclear what is meant by the term “working against each other instead of with each other.” The examiner will examine as best understood. Appropriate correction is required.
Regarding claim 18, it is unclear how two components can mate up at multiple different angles simultaneously. The examiner will examine as best understood. Appropriate correction is required.
Regarding claim 18, it is unclear if another building block is one of the building blocks previously established in the claims. Appropriate correction is required.
Regarding claim 19, it is unclear what is meant by “the multiple different types of building blocks be aligned and located such that the assembled frame can be formed from different angles when a mating connection is formed as well as an orientation of the metal angle frames and/or the metal strut framework can be flipped from one side to another side so that a same instance of that building block can couple up to another building block in multiple, different angles and orientations.” The examiner will examine as best understood. The language in this claim is vague, confusing, and indefinite. The examiner would suggest that if parts are capable of being rearranged, the applicant should use terms such as “configured to” or “capable of” instead of can be. Appropriate correction is required.
Regarding claim 20, it is unclear if a produced building block is one of the building blocks previously established in the claims. The examiner will examine as best understood. Appropriate correction is required.
Regarding claim 20, it is unclear what comprises any type of building block. Appropriate correction is required.
Regarding claim 20, it is unclear if components can mate at each of the claimed positions or only one of the claimed positions. Appropriate correction is required.
Claims 2, 5, 7 rejected under 35 USC 112 as being dependent on a rejected claim.
Claim Rejections - 35 USC § 102
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 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) 1-7, 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsieh, U.S. Patent 9,441,359.
Regarding claim 1, Hsieh discloses a structural frame comprising: an assembled frame (20; see Fig. 3) for a structure in a building formed from multiple different types of building blocks for a frame (individual components of 20, 20”; see Fig. 3), where the assembled frame for the structure in the building is formed with the multiple different types of building blocks, where the multiple different types of building blocks are configured to be assembled and integrated into the assembled frame in a manufacturing facility (col. 8, lines 63-65), and then shipped as the assembled frame to a construction site to allow installation of the assembled frame as a standardize part at the construction site, where the assembled frame is a pre-fabricated and pre-engineered skeletal assembled frame for the construction in the building, which is an open structure (see Fig. 3, generally); rather than, having walls enclosing the pre-fabricated and pre-engineered skeletal assembled frame or having non-structural dividing walls in between sections of the assembled frame (the frame unit as shown in Fig. 4, for example), where the multiple different types of individual building blocks for the frame consist of two or more of i) metal strut framework (see figures), ii) metal angle frames, iii) metal cross connects, and iv) meta mating blocks. The phrases “for a structure in a building,” “configured to be assembled and integrated into the assembled frame in a manufacturing facility, and then shipped as the assembled frame to a construction site” and “to allow installation of the assembled frame as a standardize part at the construction site” are statements of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 2, Hsieh discloses a structural frame where each different type of the multiple different types of building blocks for the frame is a pre-formed metal structure, has its own function, nominal shape, and is produced in multiple different standard nominal lengths (as shown in Fig. 3; col. 2, lines 22-26).
Regarding claim 3, Hsieh discloses a structural frame where the assembled frame for the structure in the building assembled at the manufacturing facility located away from the construction job site is constructed to be able to stand on its own when the assembled frame is shipped as well as when the assembled frame is lifted and put in place at the construction job site (the frame is capable of standing on its own as shown in Fig. 4; a structure made of steel that is bolted together is known to be able to stand on its own when shipped and put in place at a building location), where hole placements (of 41, see Fig. 5) in the multiple different types of building blocks are located to keep an alignment of the building blocks forming the assembled frame so that they are working against each other instead of with each other, which results in the assembled frame being able to stand on its own and maintain its structural integrity when being lifted into place at the construction site. The phrases “constructed to be able to stand on its own when the assembled frame is shipped as well as when the assembled frame is lifted and put in place at the construction job site” and “located to keep an alignment of the building blocks forming the assembled frame so that they are working against each other instead of with each other, which results in the assembled frame being able to stand on its own and maintain its structural integrity when being lifted into place at the construction site” are statements of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 4, Hsieh discloses a structural frame where the multiple different types of building blocks are constructed to secure to another building block via a nut and bolt mating (see figure 5), which can be torqued and inspected at the manufacturing facility to assemble and integrate the assembled frame in the manufacturing facility and then be shipped to the construction site (via apertures 41), and as such when connected together via the nut and bolt mating that is torqued and inspected at the manufacturing facility is configured to verify a pre-engineered structural integrity of the assembled frame and eliminate a need to recertify the assembled frame at the construction site, as best understood in light of the specification as the structural limitations have been met because bolts are configured to be tightened to the desired torque. This is the explicit function of a bolt. The phrases “constructed to secure to another building block via a nut and bolt mating, which can be torqued and inspected at the manufacturing facility and then shipped to the construction site,” “can be torqued and inspected at the manufacturing facility to assemble and integrate the assembled frame in the manufacturing facility and then be shipped to the construction site,” and “when connected together via the nut and bolt mating that is torqued and inspected at the manufacturing facility is configured to verify a pre-engineered structural integrity of the assembled frame and eliminate a need to recertify the assembled frame at the construction site” are statements of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Thus, as pointed out above, bolts have threads that can be tightened and torqued. Therefore, they are configured to be torqued and inspected at any desired location. Hence the claimed limitations are clearly met.
Regarding claim 5, Hsieh discloses a structural frame where the building block of the metal strut framework is produced with two or more large structurally reinforced holes (41 is surrounded by metal, see Figures; column 5, lines 19-32 describe how members 41 are used for craning the frame into place and then are bolted together. Therefore, the holes inherently need to be structurally sound in order to be used for lifting of the frame) that are sized and positioned for at least one of a construction hoist and a construction lift to lift the assembled frame into place at the construction site while maintaining its shape and structural integrity when being put into place at the construction site. The phrase “sized and positioned for at least one of a construction hoist and a construction lift to lift the assembled frame into place at the construction site while maintaining its shape and structural integrity when being put into place at the construction site” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 6, Hsieh discloses a structural frame capable of: the assembled frame for the structure in the building is constructed in the manufacturing facility away from the construction site, checked to make sure the assembled frame for the structure in the building will meet an exact dimensions needed at the construction site via a comparison to a Building Information Model for the building being created (as it is produced in a facility, col. 8, lines 63-65), as best understood in light of the specification. The frame is of the exact dimensions that it needs to be to fit in a building as shown in figure 1.
Regarding claim 7, Hsieh discloses a structural frame where the building block of the metal angle frame is produced with a set of holes (of 41) aligned and located in the metal angle frame (see Fig. 10) such that the metal angle frame can mate up squarely with another building block at multiple different angles when forming the assembled frame for the structure in the building, which allows the building block to maintain a structural integrity of that building block by not requiring additional holes to be made in the building block by not requiring additional holes to be made in the building block to connect up at the multiple different angles when forming the assembled frame (as best understood, one could connect the building blocks with wedges or other members to allow the building blocks to be connected at different angles. Therefore, they are configured to be connected in such a manner). The phrases “such that the metal angle frame can mate up squarely with another building block at multiple different angles when forming the assembled frame for the structure in the building” and “allows the building block to maintain a structural integrity of that building block by not requiring additional holes to be made in the building block to connect up at the multiple different angles when forming the assembled frame” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 18, Hsieh discloses a structural frame where the building block of the metal angle frame is produced with a set of holes aligned and located in the metal angle frame such that the metal angle frame can mate up squarely with another building block at multiple different angles when forming the assembled frame for the structure in the building (see Fig. 5 and col. 5, lines 19-32, generally), such that hole placement in the building blocks is located to keep pieces of the assembled frame working against each other instead of with each other (see frame component holes as illustrated in Fig. 5, generally). One can see that the holes are designed to be aligned and allow the bolts to be inserted therethrough. Thus, they are working together and not against each other as best understood. The phrase “located to keep pieces of the assembled frame working against each other instead of with each other” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As best understood, one could connect the building blocks with wedges or other members to allow the building blocks to be connected at different angles. Therefore, they are configured to be connected in such a manner.
Regarding claim 19, Hsieh discloses a structural frame where a set of holes (as shown in Fig. 5, col. 5, lines 19-32) created in the multiple different types of building blocks be aligned and located such that the assembled frame can be formed from different angles when a mating connection is formed as well as an orientation of the metal angle frames and/or the metal strut framework can be flipped from one side to another side so that a same instance of that building block can couple up to another building block in multiple, different angles and orientations. The examiner would like to point out that each of the building blocks has holes that allow it to be connected to another building block member with holes. Therefore, one could attach any one piece to any other piece in any arrangement they saw fit. Therefore, the building blocks with holes are configured to be attached in any desired configuration. The phrase “be aligned and located such that the assembled frame can be formed from different angles when a mating connection is formed as well as an orientation of the metal angle frames and/or the metal strut framework can be flipped from one side to another side so that a same instance of that building block can couple up to another building block in multiple, different angles and orientations” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 20, Hsieh discloses a structural frame where the multiple different types of building blocks are produced with a set of holes (as shown in Fig. 5, col. 5, lines 19-32) aligned and located within a metal structure of a produced building block such that any type of building block can mate with another building block at [one of] 1) multiple different angles, 2) multiple different orientations, or 3) a combination of both multiple different angles and multiple different orientations when forming the assembled frame for the structure in the building (see Fig. 5, generally). The examiner would like to point out that each of the building blocks has holes that allow it to be connected to another building block member with holes. Therefore, one could attach any one piece to any other piece in any arrangement they saw fit. Therefore, the building blocks with holes are configured to be attached in any desired configuration. The phrase “such that any type of building block can mate with another building block at [one of] 1) multiple different angles, 2) multiple different orientations, or 3) a combination of both multiple different angles and multiple different orientations when forming the assembled frame for the structure in the building” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that the drawings are labeled and the objection should be withdrawn, the examiner respectfully disagrees. Although the invention, the assembled frame, 100 is labeled, none of the claimed components of the frame are labeled. Although the applicant’s description in the 11/20/2025 helps to provide an understanding of singular components illustrated in figures 9-11, it remains unclear how/where these components comprise the illustrated assembled frame. Each of the claimed components should include a reference number to provide a basic understanding of the components comprising the assembled frame.
Regarding the applicant’s argument toward claim 6 not comprising a method step, the examiner respectfully disagrees. The claim comprises two limitations, each of which is a process. The rejection stands.
Regarding the applicant’s argument that the statements of intended use were not addressed, the examiner respectfully disagrees and maintains that, in each instance, the prior art is capable of performing the intended use as the structure is disclosed as set forth above. The rejections are therefore maintained.
Regarding the applicant’s argument that the modules of Hsieh are “formed rooms and/or complete trailers,” the examiner wishes to point out that although the prior art may have components in addition to the claimed components of the present invention, the structural limitations have been met. “…save time while still allowing an unconstrained construction design at the construction site” is not a claim limitation of the apparatus claims. The rejection stands.
See rejections to new limitations as set forth above.
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 GISELE D FORD whose telephone number is (571)270-7326. The examiner can normally be reached M-T,Th-F 7:30am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
GISELE D. FORD
Examiner
Art Unit 3633
/GISELE D FORD/Examiner, Art Unit 3633