DETAILED ACTION
This is a non-final Office Action on the merits for U.S. App. 18/099,878. Receipt of the RCE, amendments, and arguments filed on 03/25/2026 is acknowledged.
Claims 1 and 3-18 are pending.
Claim 2 is cancelled.
Claims 1 and 3-18 are examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 03/25/2026 has been entered.
Priority
The provisional application (63/301,327), which the present application claims priority to, depicts fasteners extending through the panel unit and into the floor below and thus directly and structurally connects such elements to one another. Such a provisional application does not teach the panel unit is to be located without structurally supporting the wall panel by connection to a floor or ceiling as presently defined in claims 8 and 11-18 and thus such a provisional application is not considered to support such claims as presently defined. The effective filing date of the present claims, where noted, is thus considered the filing date of the present application.
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 8 and 11-18 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.
The rejections of claims 1, 11, and 16 under 35 U.S.C. 112(b) for defining the “wall panel design has been certified to be fire resistant to a national standard” of the previous Office Action are withdrawn in view of Applicant’s arguments filed on 03/25/2026. For examining purposes and in light of such arguments, such limitations are considered to define that such a wall panel comprises of any characteristic of fire resistance which can be tested and certified to any national standard.
Claim 8 defines “without any structural support provided by a fixed connection to a floor or ceiling,” which renders the claimed inventions indefinite since the vertical structure of such an assembly is to be attached to a horizontal structure of the floor or wall, whether it be the floor or ceiling itself or an intervening structure, in order to secure the vertical structure thereto and also such an assembly is to rest upon a floor or ceiling surface and thus provide support to the assembly and thus the wall panel would be considered structurally connected to a horizontal structure through the vertical structure or through a weight bearing application. Thus, one of ordinary skill in the art would not know exactly what scope is covered by such negative limitations as broadly defined. For examining purposes and in light of the specification and drawings, such limitations are considered to define that no direct connection is provided between the wall panel and a floor or ceiling such that the wall assembly is considered to act as a curtain wall and thus only provides support for itself and not any support for the structure of the building. Claims 11 and 16 include similar limitations and are similarly rejected and interpreted, where claims 12-15 are rendered indefinite for their dependencies upon claim 11 and claims 17-18 are rendered indefinite for their dependencies upon claim 16.
Claim 18 defines a product formed by the method of claim 17 yet claim 17 defines a panel product, thus rendering the claimed invention indefinite. For examining purposes and in light of the specification and drawings, claim 18 is considered to define a product claim and further define the product of claim 17.
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) 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swartz (U.S. Patent 8,567,142).
Regarding claim 16, Swartz discloses a fired rated wall panel comprising:
a plurality of glass panels (#204, #222, and #224; see figure 8B) arranged in a stacked manner with a plurality of separate gaps, each said separate gap being formed between different adjacent glass panels (the gaps formed by spacers #228 and #226 between the respective adjacent panels as depicted in figure 8B);
one or more mounting components (the slots formed by spacers #226 comprise of mounting components for receiving toggles #230) configured with the plurality of glass panels as a unit (figures 8B and 8E show such glass panels and components attached to a building as a unit, where elements #226 are integrally formed with the panels to form a single unit), said mounting components being configured to mount to a vertical support structure (#201) in a building to support said unit in place without providing structural support of said panel by any floor or ceiling of said building (figures 8A-8E of Swartz depict the window unit is not directly secured to a floor or ceiling but instead is installed to a horizontal mullion #201 and sealed to the floor or ceiling and thus only supported thereon to form a curtain wall and not directly secured to the horizontal floor or ceiling so as to structurally support a weight as defined);
wherein said wall panel design has been certified to be fire resistant to a national standard (col. 2, ll. 24-45 disclose the unit meets fire barrier standards set by ASTM E119, thus considering such a unit as a fire-rated/fire resistant glazing under national ASTM standards); and wherein
said wall panel is configured to be transportable as the unit to the building (see figure 4, where the wall panel and components can be transported together, whether as an integral unit or separated but in the same container, to a job site and thus meet such “configured to” language as broadly defined).
Regarding claim 17, Swartz discloses the panel is configured to receive one or more caps (#203/210) installed over a vertical joint formed where the mounting component connect to the vertical support structure (see figure 8B).
Regarding claim 18, Swartz discloses said caps are configured to be fastened to said wall panel at said vertical support structure using a spring clip (See figure 8B of Swartz, where the caps #203 comprise of prongs that fit within grooves of beam #201 and thus allow for a spring clip connect to the support structure #201. Alternatively, a separate spring clip #202 may be used to attach such caps #210 to the vertical joint as needed, where such a spring clip and such caps are not positively defined.).
Claim Rejections - 35 USC § 102/103
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) 1, 3-9, and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swartz (U.S. Patent 8,567,142), or in the alternative under 35 U.S.C. 103 as being unpatentable over Swartz in view of Xie et al. (WO 2014/183595).
Regarding claim 1, Swartz discloses a method of installing a fired rated wall panel at a desired location comprising the steps of:
manufacturing a wall panel at a factory comprising the steps of:
forming a unit including a plurality of glass panels (#222, #224, and #204) stacked together and spaced apart to form a plurality of separate gaps (the gaps formed by spacers #228 and #226 between adjacent panels) between adjacent glass panels (see figure 8B);
installing one or more mounting components (the slot formed by spacer #226 is formed by mounting components that extend outwardly from the spacer to form such a slot) extending from the unit to form said wall panel (see figure 8B), said mounting components being configured to attach to a vertical structural beam (#201) of a building using one or more fasteners (#202/230); and
configuring said wall panel as a unit (see figure 8B, where such elements work together as a unit to attach the panel to a surface), wherein said wall panel design has been certified to be fire resistant to a national standard (col. 2, ll. 24-45 disclose the unit meets fire barrier standards set by ASTM E119, thus considering such a unit as a fire-rated/fire resistant glazing under national ASTM standards);
transporting the wall panel to the desired location as the unit (see figure 7, where the panels and mounting elements are transported and installed as a unit at the job site where needed); and
installing the wall panel at the desired location by securely connecting the mounting components at least one vertical beam (#201) at the desired location for structurally supporting said wall panel to the building (see figures 8B and 8E).
Swartz is considered to disclose such a wall panel is manufactured at a factory since such spacers #226 with mounting component slots extending from the spacer and the gap between the adjacent panels are inherently adhered to the glass panes at an off job-site location and transported to the job-site since the job-site would not have the machinery or clean room conditions needed to form such panels. However, if the Examiner is considered to over broadly interpret Swartz as meeting such manufactured in a factory limitations of claim 1, it is highly well known in the art, as evidenced by Xie et al., that such glass wall panels #2 and fastening components #133 can be manufactured and installed together in a factory so as to thus be shipped to the job site and allow for quicker construction. See the highlighted portion on page 14 of the English translation. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the glass panels and mounting components of Swartz to be manufactured together at a factory, as taught in Xie et al., in order to make construction quicker and easier by reducing the amount of steps needed to be completed at the job site.
As a note and for compact prosecution purposes, col. 7, ll. 19-21 of Swartz disclose that such spacers #226 with slots and toggle retainers #230 can be used in place of the interleaved metal plates #111 connection method as depicted in the embodiments of figures 4 and 6E. Though the spacers with slots #226 of figures 8A-8E of Swartz anticipate such limitations with respect to the mounting components, in the alternative, it would have also been obvious to have substituted the toggle fastener and slot mounting components of figures 8A-8E of Swartz for the interleaving projecting metal plates of figure 6E of Swartz since such mounting methods are disclosed as being substitutes for one another to yield the predictable result of attaching such glazing units to a supporting structure of a building.
Regarding claim 3, Swartz discloses, or in the alternative in view of Xie et al. render obvious, the step of installing one or more caps over a vertical joint formed where the mounting component connects to the vertical beam (Swartz discloses use of gasket #210, which can be considered a cap which is installed over such a joint between the beam #201 and mounting component #226. Alternatively, Xie et al. disclose the beams #11 can comprise of multiple shapes, such as rectangular as depicted in figure 7, and H-shaped, as depicted in figure 8, where caps #14 can be used to cover the connections between the mounting component #133 and the beam #11, where it would have been obvious to have included similar caps, as taught in Xie et al., within the invention of Swartz so as to allow the panel unit to attach to different shaped beams and provide a decorative cover for such a connection.).
Regarding claim 4, Swartz discloses, or in the alternative in view of Xie et al. render obvious, said caps are configured to be fastened to said wall panel at said vertical joint using a spring clip (element #220 is a backer which can be considered a spring clip since it is flexible and configured to apply a force to revert back to its original shape and is configured to adhere and connect cap #210 to the wall panel and the mounting components #230. Alternatively, when Swartz is modified in view of Xie et al. to include such caps as explained above, such caps are attached using spring clip flanges which extend from the flat surface of such a cap, as depicted in figures 7 and 8 of Xie et al.).
Regarding claim 5, Swartz discloses, or in the alternative in view of Xie et al. render obvious, each one of said structural components include at least one bracket (Swartz; #230) configured to connect to one of said beams using said one or more fasteners (Swartz; #202), wherein said cap is configured to cover said bracket (see figure 8B of Swartz as well as figures 7 and 8 of Xie et al., where at least one end of the bracket is to be covered from sight by a respective cap).
Regarding claim 6, Swartz discloses, or in the alternative in view of Xie et al. render obvious, each one of said structural components include at least one bracket (Swartz; #230) configured to connect to one of said beams using one or more of said fasteners (Swartz; #202; See figure 8B).
Regarding claim 7, Swartz discloses, or in the alternative in view of Xie et al. render obvious, said at least one bracket is configured for placement between a vertical joint formed where ends of said separate glass panels meet together in said wall panel (see figures 7 and 8B of Swartz).
Regarding claim 8, Swartz discloses, or in the alternative in view of Xie et al. render obvious, said wall panel is supported in place by said secure connection to said at least one vertical beam without any structural support provided by a fixed connection to a floor or ceiling (figure 8D of Swartz depicts the window unit is not directly secured to a floor or ceiling but instead is installed to a horizontal mullion #201 and sealed to the floor or ceiling using a sealant and thus only supported thereon to form a curtain wall and not secured so as to structurally support a weight as defined).
Regarding claim 9, Swartz discloses, or in the alternative in view of Xie et al. render obvious, said wall panel is comprised of a plurality of layers of said glass panels (figure 8B of Swartz depicts three layers of panels, #204, #224, and #222).
Regarding claim 11, Swartz discloses a method of installing a fired rated wall panel at a desired location comprising the steps of:
manufacturing a wall panel at a factory comprising the steps of:
providing a plurality of glass panels (#222, #224, and #204) stacked one next to the other, said glass panels being spaced apart to form a plurality of separate gaps (the gap formed by spacers #226 and #228 between adjacent panels), each said separate gap being formed between different adjacent glass panels (see figure 8B);
securing said stacked glass panels together into a unit (figure 8B depicts such stacked panels and spacers #226/228 are secured together to form a unit);
installing one or more mounting components (the slot formed by the spacer #226 is formed by mounting components which extend outwardly from the spacer to form the slot), each one of said mounting components including a bracket (the U-shaped bracket formed by the spacer #226 to form the slot) being configured to attach to a vertical structural beam (#201) of a building using one or more fasteners (#202), wherein said bracket extends from said stacked glass panels of said unit to form said wall panel (see figure 8B, where the bracket extends from the spacer and gap between panes #222 and #204 outwardly so as to engage element #230); wherein
said wall panel design has been certified to be fire resistant to a national standard (col. 2, ll. 24-45 disclose the unit meets fire barrier standards set by ASTM E119, thus considering such a unit as a fire-rated/fire resistant glazing under national ASTM standards);
transporting the manufactured wall panel to a building site of a building (see figure 7, where the panels and mounting elements are transported and installed as a unit at the building job site where needed); and
installing the wall panel in said building by securely connecting the brackets to at least one vertical beam (#201) at a desired location in the building for securely holding said wall panel to said building (see figures 7 and 8B), wherein
said wall panel is fully supported in place at said desired location by said secured connection to said at least one vertical beam without any structural support provided by connection to a floor or ceiling (figure 8D of Swartz depicts the window unit is not directly secured to a floor or ceiling but instead is installed to a horizontal mullion #201 and sealed to the floor or ceiling by a sealant and thus only supported thereon to form a curtain wall and not directly secured to the horizontal floor or ceiling so as to structurally support a weight as defined).
Swartz is considered to disclose such a wall panel is manufactured at a factory since such spacers #226 with mounting component slots extending from the spacer and the gap between the adjacent panels are inherently adhered to the glass panes at an off job-site location and transported to the job-site since the job-site would not have the machinery or clean room conditions needed to form such panels. However, if the Examiner is considered to over broadly interpret Swartz as meeting such manufactured in a factory limitations of claim 11, it is highly well known in the art, as evidenced by Xie et al., that such glass wall panels #2 and fastening components #133 can be manufactured and installed together in a factory so as to thus be shipped to the job site and allow for quicker construction. See the highlighted portion on page 14 of the English translation. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the glass panels and mounting components of Swartz to be manufactured together at a factory, as taught in Xie et al., in order to make construction quicker and easier by reducing the amount of steps needed to be completed at the job site.
As a note and for compact prosecution purposes, col. 7, ll. 19-21 of Swartz disclose that such spacers #226 with slots and toggle retainers #230 can be used in place of the interleaved metal plates #111 connection method as depicted in the embodiments of figures 4 and 6E. Though the spacers with slots #226 of figures 8A-8E of Swartz anticipate such limitations with respect to the mounting components as defined in claim 11, in the alternative, it would have also been obvious to have substituted the toggle fastener and slot mounting components of figures 8A-8E of Swartz for the interleaving projecting metal plates of figure 6E of Swartz since such mounting methods are disclosed as being substitutes for one another to yield the same predictable result of attaching such glazing units to a supporting structure of a building.
Regarding claim 12, Swartz discloses, or in the alternative in view of Xie et al. render obvious, the step of installing one or more caps over a vertical joint formed where the mounting component connects to the vertical beam (Swartz discloses use of gasket #210, which can be considered a cap that is installed over such a joint between the beam #201 and mounting component #226. Alternatively, Xie et al. disclose the beams #11 can comprise of multiple shapes, such as rectangular as depicted in figure 7, and H-shaped, as depicted in figure 8, where caps #14 can be used to cover the connections between the mounting component #133 and the beam #11, where it would have been obvious to have included similar caps, as taught in Xie et al., within the invention of Swartz so as to allow the panel unit to attach to different shaped beams and provide a decorative cover for such a connection.).
Regarding claim 13, Swartz discloses, or in the alternative in view of Xie et al. render obvious, said caps are configured to be fastened to said wall panel at said vertical joint using a spring clip (element #220 is a backer which can be considered a spring clip since it is flexible and configured to apply a force to revert back to its original shape and is configured to adhere and connect cap #210 to the wall panel and the mounting components #230. Alternatively, when Swartz is modified in view of Xie et al. to include such caps as explained above, such caps are attached using spring clip flanges which extend from the flat surface of such a cap, as depicted in figures 7 and 8 of Xie et al.).
Regarding claim 14, Swartz discloses, or in the alternative in view of Xie et al. render obvious, said at least one bracket is configured for placement between a vertical joint formed where ends of separate glass panels meet together in said wall panel (see figure 8B of Swartz).
Regarding claim 15, Swartz discloses, or in the alternative in view of Xie et al. render obvious, the step of placing a plurality of said units adjacent to each other along an end of said units to form a wall portion (see figures 7 and 8B of Swartz, where a plurality of such wall panel units can be attached to one another and to the vertical mullions #201 to form a wall portion).
Claim Rejections - 35 USC § 103
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Swartz in view of Xie et al.
Regarding claim 10, Swartz discloses, or in the alternative in view of Xie et al. render obvious, the claimed invention except specifically for said wall panel further comprises a frame that is comprised of aluminum. However, it is highly well known in the art, as evidenced by Xie et al., that such glass units for a curtain wall can be constructed using an aluminum alloy frame with glass bonded thereto. See page 1 of the English translation, page 76 of the entire Foreign reference document as previously filed. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the wall panel frame of Swartz out of aluminum in order to form a lightweight yet strong assembly and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 3-18 have been considered but are moot because Applicant’s amendments to the claims required the use of a different interpretation and embodiment rejection of the prior art of record than previously used.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE V ADAMOS whose telephone number is (571)270-1166. The examiner can normally be reached Monday - Friday 9-5.
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635
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