DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-13 are pending.Claims 14-33 are cancelled.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “Fastening elements” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification identifies the fastening elements as clips, with elements identified in at least [0010].
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) 1-3, 5-9, 11-13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Ciuperca (US 2013/0074433).
Re claim 1, Ciuperca discloses a wall assembly (Fig. 10), comprising:
a plurality of girders (14, 18, 22; Fig .1) each including a first insulator (14, 18, 22; [0054]) and having a longitudinal axis (Fig. 1, vertically), the plurality of first insulators (14, 18, 22) spaced apart along (Fig. 1, left to right) a first direction (left to right) transverse to the longitudinal axes (Fig. 1, vertically);
one or more second insulators (16, 20);
fastening elements (26, a functional equivalent) coupled to (Fig. 1, Fig. 10) the plurality of girders (14, 18, 22) and supporting (Fig. 10) the one or more second insulators (16, 20) along the first direction (Fig. 1, left to right) between sequentially spaced ones of the plurality of girders (14, 18, 22); and
a first concrete layer (174, [0069]) coupled to surfaces (of 14, 18, 22) of the plurality of first insulators (14, 18, 22) and the one or more second insulators (16, 20).
Re claim 2, Ciuperca discloses the wall assembly of claim 1, further comprising a second concrete layer (12; [0054]), wherein the first (174) and second concrete layers (12) sandwich (Fig. 10) the plurality of first insulators (14, 18, 22) and the one or more second insulators (16, 20).
Re claim 3, Ciuperca discloses the wall assembly of claim 2, wherein surfaces (of 14-22) of the plurality of first insulators (14, 18, 22) and the one or more second insulators (16, 20) are substantially co-planar (Fig. 10).
Re claim 5, Ciuperca discloses the wall assembly of claim 1, wherein the fastening elements (26) comprise one or more clips (28) each having a vertex (Fig. 15, bottom of 32) and a first leg (30) with a first end (end of 30), each first end (end of 30) supporting one of the one or more second insulators (16, 20) between sequentially (Fig. 15) spaced ones of the plurality of girders (14, 18, 22).
Re claim 6, Ciuperca discloses the wall assembly of claim 5, wherein the first ends (of 30) are configured to urge (Fig. 10) the one or more second insulators (16, 20) towards (Fig. 10) the first concrete layer (174).
Re claim 7, Ciuperca discloses the wall assembly of claim 5, wherein each of the one or more clips (28) has a second leg (46) with a second end 9end of 46), the first (end of 30) and second ends (46) configured to urge sequentially (Fig. 10) spaced ones of the one or more second insulators (16, 20) towards the first concrete layer (174).
Re claim 8, Ciuperca discloses the wall assembly of claim 5, further comprising, for each girder (14, 18, 22) from the plurality of girders (14, 18, 22): a rod (143-158) extending parallel to (Fig. 1) the longitudinal axis of the girder (14, 18, 22), the vertexes (bottom of 32 in Fig. 15) of the one or more clips (28) coupled to (as “coupled to” requires no juxtaposition) the rod (143-158).
Re claim 9, Ciuperca discloses the wall assembly of claim 8, wherein each girder (14, 18, 22) from the plurality of girders (14, 18, 22) comprises one or more connectors (44) coupling the girder (14, 18, 22) to the rod (143-158).
Re claim 11, Ciuperca discloses the wall assembly of claim 1, wherein each of the plurality of first insulators (14, 18, 22) comprises Extruded Polystyrene Insulation (XPS) ([0054] disclosing individual selection of various materials including XPS), and each of the one or more second insulators (16, 20) comprises Expanded Polystyrene Insulation (EPS) ([0054] disclosing individual selection of various materials including EPS).
It should further be noted that the language “expanded” and “extruded” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 12, Ciuperca discloses the wall assembly of claim 1, wherein the plurality of first insulators (14, 18, 22) alternate with (Fig. 10, Fig. 10) the one or more second insulators (16, 20) along the first direction (Fig. 1).
Re claim 13, Ciuperca discloses the wall assembly of claim 1, wherein the plurality of girders (14, 18, 22) are coupled to each other along the first direction (Fig. 1).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ciuperca (US 2013/0074433) in view of Miller et al (“Miller”) (US 5,697,189).
Re claim 4, Ciuperca discloses the wall assembly of claim 2, but fails to disclose wherein the first concrete layer, the second concrete layer, or both comprise fiber reinforced concrete (FRC).
However, Miller discloses wherein the first concrete layer (11), the second concrete layer (13), or both comprise fiber reinforced concrete (FRC) (Abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the wall assembly of Ciuperca wherein the first concrete layer, the second concrete layer, or both comprise fiber reinforced concrete (FRC) in order to provide increased durability, crack resistance, and improved structural performance, all well-known benefits of FRC, and 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Allowable Subject Matter
Claim(s) 10 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Objections to the Drawings: Applicant’s argument with respect to the drawings is persuasive and objection to the drawings is hereby withdrawn.
Claim Interpretations 35 USC 112: Applicant’s argument with respect to the claims interpreted under 35 USC 112 have been noted, and no response appears required.
Claim Rejections 35 USC 102: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant argues that Ciuperca disclose a form insulating panel, which is a single large continuous insulating layer. Applicant argues that this insulation layer is formed from a plurality of form insulating panels. As a result, Applicant argues that Ciuperca cannot disclose spaced girders. As noted in the previous rejection and the above, Ciuperca discloses indeed disclose numerous panels to make up the insulating panel. Specifically, panels 14, 16, 18, 20 and 22 make up the finished product. As noted previously and the above, the girders (first insulators) are interpreted as features 14, 18 and 22. These are girders because they have a longitudinal axis (see Fig. 1). They are spaced apart along the longitudinal axis from each other because 14 and 18 are spaced by 16, and 18 and 22 are spaced by 20. In other words, the second insulators 16 and 20 are disposed between the first insulators 14, 18 and 22, which spaces the first insulators 14, 18 and 22. Applicant argues that in effect, there is no spacing because the panels abut each other. However, this is the same as Applicant’s Fig. 1. First insulators 101 abut against second insulations 110. In addition, each “girder” itself is an insulator. It is not clear if Applicant is contending that the insulator is a separate element, as that does not appear to be claimed or disclosed in the Application as originally filed.
Next, Applicant argues that the anchor members are not “coupled to the plurality of girders and support the one or more second insulators” because the form insulating panels are adhesively joined to each other. The Examiner respectfully disagrees. First, [0013] explicitly recites that the anchor members serve to mechanically attach the first insulators (the girders) to the concrete. Mechanical attachment is certainly coupling of the first insulators. Second, “coupled” is extremely broad. It does not require any particular contact, juxtaposition, or particular attachment. The Moon is coupled to the Earth, yet it is 239k miles away. Third, “supporting the one or more second insulators” is extremely broad. It does not require any particular contact, juxtaposition, or particular attachment. Simply by maintaining mechanical attachment, the anchor members serve to “support” the one or more second insulators, especially as the anchor members are explicitly recited to mechanically attach thereto.
Applicant’s arguments concerning the remaining claims are addressed by the above.
Conclusion
THIS ACTION IS MADE FINAL. 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 KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635