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 1-5, 22-31, 33-35 are pending.
Claims 6-21 and 32 are cancelled.
Claims 24-31 and 33-35 are withdrawn.
Claims 1-5 and 22-23 are rejected herein.
Election/Restrictions
On pages 2-4 of Applicant’s 10/29/25 Remarks, Applicant again contends that the requirement for restriction was improper. The lack of unity of Invention of the claimed groupings was provided in the 4/22/25 Requirement for Restriction. The Examiner responded to Applicant’s contentions on pages 2-3 of the 7/2/25 Non-Final Rejection. On page 3 of the 7/2/25 Non-Final Rejection, the requirement was deemed proper and made FINAL. Any further arguments thereto are therefore rendered moot. However, it is noted that “after a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement.” Claims 24-31 and 33-35 remain withdrawn.
Claim Objections
Claim 23 is objected to because of the following informalities: Claim 23 recites, “filing” in line 5 and it appears intended to recite, “filling.” Appropriate correction is required.
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.
Claim(s) 23 is/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.
Re claim 23, claim 23 recites, “its” in line 6. Numerous elements are previously introduced and thus, it is unclear as to which this langue refers. It appears this language is intended to refer to “the fabric sheet” and will be interpreted as such.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al (“Hepworth”) (US 3,957,098) in view of Parks (US 2019/0264407).
At the outset, citations to the prior art will be made subsequent to Applicant’s own numerical identifications.
Re claim 1, Hepworth discloses a building module (1) (10) comprising:
a fabric sheet (2) (12, 14, Col 2 lines 4-10);
a filling material (3) (Col 1 lines 20-25); and
a holding means (4) (22, 24);
wherein the fabric sheet (2) (12, 14) wraps around (Fig. 3) the filling material (3) (Col 1 lines 20-25) to form a wrap (Fig. 3) having folds (Fig. 3) over the filling material (3) (Col 1 lines 20-25), with overlapping edges (5) (proximate 22 and 224) of the wrap (Fig. 3) being held in place by the holding means (4) (22, 24);
the holding means (4) (22, 24) is made up of one or more of:
pins, barbed wires, staples, stakes, spikes, pegs, or stitches (Col 2 lines 64-65) affixed to the wrap (Fig. 3);
adhesives provided between two adjacent overlapping edges (5) of the folds of the wrap (because the language above requires “one or more of,” the adhesive appears not to be required as long as the holding means is met above); and
a further building module (10) placed atop (Fig. 4) the building module (10); and
the building module (10) is formed by placing the filling material (3) (Col 1 lines 20-25) on top of the fabric sheet (2) (12, 14) prior to (this language being product by process) wrapping the fabric sheet (2) (12, 14) around the compressed filling material (3) (Col 1 lines 20-25; as modified below) and applying the holding means (4) (22, 24) to the overlapping edges (5) (Fig. 3) of the folds (12, 14) so formed,
but fails to disclose compressing the filling material using a compressing means (though as noted below, this language is considered product by process).
However, Parks discloses compressing ([0020]) the filling material ([0020]) using a compressing means ([0040]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building module of Hepworth with compressing the filling material using a compressing means (though as noted below, this language is considered product by process) as disclosed by Parks in order to allow for transportation of more bags ([0008]).
It should further be noted that the language “formed by placing the filling material on top of the fabric sheet and compressing the filling material using a compressing means prior to wrapping the fabric sheet around the compressed filling material and applying the holding means to the overlapping edges of the folds so formed” 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 2, Hepworth as modified discloses the building module (1) as claimed in claim 1, wherein the fabric sheet (2) (12, 14) is made of synthetic material (Col 2 lines 4-10), natural fibre material, or a combination thereof.
Re claim 3, Hepworth as modified discloses the building module (1) as claimed in claim 1, wherein the filling material (3) (Col 1 lines 20-25) is selected from sand (Col 1 lines 20-25), silt, clay, gravel (Col 1 lines 20-25), earth aggregate material, organic material, recycled waste, or a combination thereof.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al (“Hepworth”) (US 3,957,098) in view of Parks (US 2019/0264407) and Sheridan (US 2010/0278594).
Re claim 4, Hepworth discloses the building module (1) as claimed in claim 3, but fails to disclose wherein the filling material further comprises a bonding agent from lime, clay, cement, proteins, gypsum, fibre or glue, or a combination thereof.
However, Sheridan discloses wherein the filling material (102) further comprises a bonding agent ([0036]) from lime, clay, cement, proteins, gypsum, fibre or glue ([0036]), or a combination thereof.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building module of Hepworth wherein the filling material further comprises a bonding agent from lime, clay, cement, proteins, gypsum, fibre or glue, or a combination thereof as disclosed by Sheridan in order to provide a stronger, more rigid building module.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al (“Hepworth”) (US 3,957,098) in view of Parks (US 2019/0264407) and Wang (US 2012/0051673).
Re claim 5, Hepworth discloses the building module (1) as claimed in claim 1, but fails to disclose comprising more than one fabric sheet (2), wherein an end of a second fabric sheet (2) wraps around one end of a first fabric sheet (2), and wherein both the first fabric sheet (2) and the second fabric sheet (2) wraps around the filling material (3) and the overlapping edges (5) of the wraps are held by the holding means (4).
However, Wang discloses more than one fabric sheet (2) (11, 12), wherein an end (of 12) of a second fabric sheet (2) (12) wraps around (proximate 13A) one end of a first fabric sheet (2) (11), and wherein both the first fabric sheet (2) (11) and the second fabric sheet (12) wraps (2) around (10 being a sand bag) the filling material (3) (sand) and the edges (5) (proximate 13A) of one or more of the wraps (11, 12) are held by the holding means (4) ([0028]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building module of Hepworth with more than one fabric sheet (2), wherein an end of a second fabric sheet (2) wraps around one end of a first fabric sheet (2), and wherein both the first fabric sheet (2) and the second fabric sheet wraps (2) around the filling material (3) and the edges (5) of one or more of the wraps are held by the holding means (4) as disclosed by Wang in order to allow for greater manipulation of the filing material, as providing two sheets instead of wrapping one allows for attachment and completion of the sheets after moving material to desired locations. In other words, providing two sheets sewn together provides more flexibility in filling and design than that of using a single, folded sheet.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al (“Hepworth”) (US 3,957,098) in view of Parks (US 2019/0264407) and Bradley (US 5,902,070).
Re claim 22, Hepworth discloses the building module (1) as claimed in claim 1, but fails to disclose wherein the fabric sheet (2) wraps around the filling material (3) in a spiral configuration, whereby the folds are formed over the filling material (3) about turns of the spiral configuration in a continuous manner, and the overlapping edges (5) are formed between consecutive turns of the spiral configuration.
However, Bradley discloses wherein the fabric sheet (2) (50) wraps around the filling material (3) (18) in a spiral configuration (Fig. 5), whereby the folds (Fig. 5) are formed over the filling material (3) (18) about turns (Fig. 5) of the spiral configuration (Fig. 5) in a continuous manner (Fig. 5), and the overlapping edges (5) (at 54) are formed between consecutive turns (Fig. 5) of the spiral configuration (Fig. 5).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building module of Hepworth wherein the fabric sheet (2) wraps around the filling material (3) in a spiral configuration, whereby the folds are formed over the filling material (3) about turns of the spiral configuration in a continuous manner, and the overlapping edges (5) are formed between consecutive turns of the spiral configuration as disclosed by Bradley in order to allow for an elongated building module made from a single piece of fabric.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth et al (“Hepworth”) (US 3,957,098) in view of Glodack (US 2013/0309011).
Re claim 23, Hepworth discloses a method (Fig. 1-4) for making a building module (10) comprising the steps of:
spreading (Fig. 2) a fabric sheet (2) (12, 14; Col 2 lines 4-10);
placing (Fig. 3) a filling material (3) (Col 1 lines 20-25) atop the fabric sheet (2) (12, 14);
wrapping (Fig. 3-4) the fabric sheet (2) (12 ,14) up and over the compressed filing material (3) (Col 1 lines 20-25) by folding (Fig. 2) one side (proximate 37-38) of the fabric sheet (2) (12, 14) along its length onto another (Fig. 2); and
providing (Fig. 3 showing 22 and 24 provided) a holding means (4) (22, 24) to hold the wrapping of the fabric sheet (12, 14; Fig. 3-4),
but fails to disclose compressing the filling material (3).
However, Glodack discloses compressing ([0019]) the filling material (3) (16).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the building module of Hepworth with compressing the filling material as disclosed by Glodack in order to reduce the size of the building module for shipping / transportation, or to compact the filling material to provide a more rigid, durable building module.
Response to Arguments
Election/Restrictions: Applicant’s argument with respect to the election/restriction are addressed above.
Objections to the Claims: Applicant’s argument with respect to the claim objections is persuasive and objection to the claims (for the reasons stated in the previous rejection) is hereby withdrawn.
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is persuasive and rejection of the claims pursuant to 35 USC 112 (for the reasons stated in the previous rejection) is hereby withdrawn.
Claim Rejections 35 USC 102/103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
On page 5, Applicant provides context for what pending claim 1 requires, as well as what Hepworth allegedly discloses. Particularly of import, Applicant points out that in operation. The bag is positioned at a location and then pumped with a filling material. Applicant argues that the claimed module is constructed by placing a quantity of filling material on a flat, continuous fabric and actively wrapping, providing a deliberate folding and enclosing operation. Claim 1 is drawn to a building module. It is not drawn to method of creating a building module. The final assembly of the product is what governs a product claim, not the manner by which the product is formed. In other words, there are no claim features in the claimed product claim that require, or can be reasonably considered to require, placing a quantity of filling material on a flat, continuous fabric and actively wrapping, providing a deliberate folding and enclosing operation. What governs is the final product thereof. The fact that Hepworth does not disclose “a wrapping operation or a folding operation” is thus irrelevant to claim 1. Applicant contends that a person having ordinary skill would not be motivated to adapt Hepworth’s stitched bag into a wrapped configuration because the two approaches are different functionally. Hepworth specifically shows a bag wrapped around a filling material. What Hepworth need not show in a product claim is an active step of wrapping. The fact is that Applicant argues that Hepworth does not disclose the steps “claimed” resulting in the product. However, as noted above (as well as the previous rejection), Claim 1 is drawn to a building module. It is not drawn to method of creating a building module. The final assembly of the product is what governs a product claim, not the manner by which the product is formed.
Next, Applicant argues that claim 1 requires holding means affixed to the wrap applied after the wrapping step. Again, as noted above, Claim 1 is drawn to a building module. It is not drawn to method of creating a building module. The final assembly of the product is what governs a product claim, not the manner by which the product is formed. In other words, the order of steps in the process are irrelevant. 22 and 24 of Hepworth are holding means. The timing of their affixation is irrelevant to the product claim. In addition, it is noted that stitching (22, 24) is specifically existent to hold the bag together. Claim 1 specifically notes that the holding means may be stitches. Applicant argues that the specification states that the holding means is embedded through the fabric, as a functional fastener. This is not claimed. All that is required is a holding means comprised of one or more of the claimed elements. Stitches are very clearly embedded through fabric and are specifically identified as one of the holding means. It is not readily apparent how stiches may reasonably be considered holding means for Applicant’s pending claim 1, but not that of the prior art.
Next, Applicant argues that claim 1 requires compressing the filling material prior to wrapping. Again, Claim 1 is drawn to a building module. It is not drawn to method of creating a building module. The final assembly of the product is what governs a product claim, not the manner by which the product is formed. However, in light of Applicant’s amendment, it is specifically noted that the prior art teaches compressing of filling material. Applicant argues that the technique of Hepworth is completely different. Again, this is irrelevant in a product claim. Applicant contends that the Hepworth product lacks the densified, load-bearing core produced by the claimed process. Claim 1 makes no such requirement of a densified, load-bearing core.
Finally, Applicant argues that even if the process words are non-limiting, Hepworth does not disclose the claimed product. In support, Applicant contends that Hepworth is a pre-manufactured bag sealed and filled by pumping. There is no disclosure of a sheet wrapped around the filling material. It is not readily apparent how it may be contended that the process steps claimed may be non-limiting, but then attempt to distinguish over the prior art by arguing that Hepworth fails to disclose said process steps. Pre-manufacturing, pumping, and wrapping are all directed to the process by which the product is formed. In addition, in response to Applicant’s contention that Hepworth does not disclose the claimed holding means, Applicant is directed to the above discussion.
Applicant’s arguments concerning claims 4-5 are addressed by the above, with respect to claim 1.
Regarding claim 23, Applicant first lays out the teachings of Glodack and pending claim 23. Applicant first argues that Glodack’s compression is purely for pre-packing, and that there is no particular filling material that is compressed. The Examiner respectfully disagrees. [0019] states that the bag 10 may be compressed prior to use. Subsequently, when needed to be used, bag 10 may be soaked in liquid 16 such that the polymer 14 expands. Thus, the bag, with polymer 14, is compressed, and when needed to be used, liquid is added to the compressed bag for expansion. Glodack specifically teaches compressing bag 10 which contains filling material 14. It is further noted that claim 23 merely requires compressing a filling material. There is no claim language directed to the order of process, or any timing whatsoever, about when such compression occurs.
Next, Applicant contends that the bags are filled in situ through a nozzle and not transported post-filling (per Hepworth). Hepworth is not relied upon as disclosing any compression. Provided a filling material and compressing it per Glodack would greatly simplify installation and transportation. Applicant contends that the materials of each reference and operational contexts are incompatible. It is not clear how this is the case. Both are directed to bags/wraps with filling materials. It would appear that Glodack and Hepworth are directly related. Moreover, the test for obviousness is not whether the references are “technically compatible.” Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As such, the prior art meets the claim.
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 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