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 .
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, and 5-20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Bertovic (US 10,247,222). Bertovic discloses a building panel system and method comprising; a fibrous building panel (42) which has a thickness and a panel fastener (10) for mounting the panel to a structure (40) wherein the panel fastener is driven through the panel into the structure. As best seen in Figs. 3(a) and 3(b) the panel fastener comprising: a head (16) having first and second parallel flat surfaces; an engagement feature (22) on the first surface for engagement by a tool; an unthreaded cylindrical shank (10) of constant diameter extending from the second surface and ending at a shoulder (21); a threaded portion (14) extending from the shoulder with an outer diameter less than a diameter of the shank. As seen in Fig. 4d the shank is positioned in the building panel with a length equal to the thickness of the building panel with the head positioned on an outer surface of the building panel and the threaded portion positioned in the structure. Bertovic additionally shows: the ratio of shank length to building panel thickness to be the same thus would be within the claimed range (Fig. 4d); the ratio of the head diameter to thickness to be between 20:1 and 5:1 (Figs. 3(a) and 3(b)); and the ratio shank diameter to outer thread diameter to be between 1.11:1 and 1.83:1. The building panel (42) includes a concealed surface facing away from an occupied space and an outer surface facing the occupied space such that the outer surface and first head surface face the occupied space.
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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.
Claims 2-3, 10-11, 14-15, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bertovic. Before the effective filing date of the claimed invention claimed ratios would alternatively have been obvious over Bertovic as an optimization for particular design requirements.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Bertovic as applied to claim 1 above, and further in view of Gong (US 2009/0185880). Bertovic does not disclose the threaded portion having a double thread. Gong teaches a double thread where one helix (314) extends radially farther from the axis the other (316). Before the effective filing date of the claimed invention it would have been obvious for one of ordinary skill in the art to provide the threaded section of Bertovic with a double thread as disclosed in Gong in order to facilitate the insertion of the fastener into the multiple materials.
Response to Remarks
Applicant argues claim 1, as amended, defines over Bertovic because Bertovic fails to disclose the first surface of the fastener head and outer panel surface facing an occupied space. Applicant argues that since the fastener head in Bertovic is concealed within another workpiece it cannot face an occupied space. In response, the examiner agrees with applicant’s understanding of Bertovic but, the claims do not preclude the fastener head from being concealed behind another workpiece. In Bertovic, while the fastener head is concealed behind a piece of skirting, its’ outer first surfaces is still facing the occupied space in the same direction as the outer panel surface. There is nothing in claims which preclude the fastener head from having prongs for securing a piece of skirting and concealing the head.
Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Bertovic does not disclose a ceiling system, wall system or other panel system that defines an occupied space. In response, the examiner disagrees because the panel in Bertovic is described as a “plasterboard wall lining” (column 5, paragraph beginning line 4) which is well know to form the interior walls of a home.
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 FLEMMING SAETHER whose telephone number is (571)272-7071. The examiner can normally be reached M-F 8:30 - 7:00 eastern.
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/FLEMMING SAETHER/Primary Examiner, Art Unit 3675