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 .
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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grant et al. (US 2018/0223530 A1).
Regarding claim 1, Grant discloses manufacturing a flat construction element (see Figs. 3, 7A, 7B), in particular a sandwich panel provided with a made-to-measure duct course (30; pg. 5, [0069], lines 1-4; Fig. 1); the sandwich panel comprises at least an insulating panel (22) made of expanded insulation material (pg. 4, [0066]) and a flat cover plate (24; pg. 5, [0067]) on the top side of the insulating panel in a main plane, wherein the made-to-measure duct course (30) is provided in the insulating panel, by providing an insulating panel (22) made of expanded insulation material; providing a slot (32), from above, in the main plane of the insulating panel (22) in a pattern which corresponds to the pattern of the desired duct course (30); and arranging the cover plate (24) over the main plane of the insulating panel, so that the slot (32) which has been provided is closed off on the side of the main plane by the flat cover plate (24), thus forming a closed duct of the duct course (30).
Regarding claim 2, Grant discloses providing a coating (76; pg. 7, [0094]; Fig. 7A, 7B)) in a duct of the duct course formed by the slot (32) and the flat cover plate (24).
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) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Grant et al. (US 2018/0223530 A1) in view of Miyaji et al. (JP3102179A).
Grant as previously described discloses all of the claimed subject matter except for the following: the step of providing a reinforcement layer and/or coating in the duct course comprises: introducing a spray nozzle in a duct via one or more outlets of the duct course; or wherein the reinforcement layer and/or coating being selected from: polyurethane, polyurea, polyester or epoxy.
Miyaji discloses introducing a spray nozzle (3; Fig. 2) in a duct via one or more outlets (1a) of the duct course. Miyaji discloses the coating being a resin.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the coating in the duct course of Grant by introducing a spray nozzle in a duct via one or more outlets of the duct course, and to provide the coating as a resin, in light of the teachings of Miyaji, in order to provide a waterproof film on the inner surface of the hole/outlet.
The combination of Grant/Miyaji teaches the coating being a resin, however, the combination does not disclose expressly the resin being epoxy.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to provide the coating of Grant as an epoxy because Applicant has not disclosed that providing the coating as epoxy provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the resin taught by Miyaji in the combination of Grant/Miyaji because the resin effectively coats and protects the surface of the outlet.
Therefore, it would have been an obvious matter of design choice to modify Grant in the combination of Grant/Miyaji to obtain the invention as specified in claim 4.
Allowable Subject Matter
Claim 9 is 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
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant argues “Grant fails to disclose, teach, or suggest at least "arranging the cover plate over the main plane of the insulating panel, so that the slot which has been provided is closed off on the side of the main plane by the cover plate, thus forming a closed duct of the duct course," as recited in Claim 1 as originally filed.”
In response, the examiner maintains that Grant discloses a flat cover plate (24) and arranging the flat cover plate over the main plane of the insulating panel, so that the slot which has been provided is closed off on the side of the main plane by the flat cover plate, thus forming a closed duct of the duct course." A portion of the cover plate (24) of Grant conforms to the duct course and it is flat against the duct course such that is contours to the duct course. The claim language does not state the flat cover plate should not contour to the duct course nor does the claim language require the entirety of the flat cover plate to be flat such that the duct course does not contour to the duct course. In addition, if it is applicant’s intent to infer the flat cover plate is oriented strand board as stated which cannot be contoured to the duct course as stated in the arguments filed then applicant should add the limitations of dependent claim 9 into independent claim 1 to overcome the rejection of record.
Applicant argues that “Miyagi fails to cure the above-mentioned deficiencies of Grant. For example, Miyaji discloses a concrete wall or flooring panel comprising hollow holes penetrating the panel having a waterproof membrane formed on its peripheral surface. See Miyaji Claim 1 (translated). Miyaji does not teach, disclose, or suggest a flat cover plate forming the hollow holes or "ducts" through the concrete panel and therefore does not cure the deficiencies of Grant.”
In response, the examiner maintains Grant disclose the flat cover plate as explained in detail in the rejection and subsequent response to arguments.
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 JERMIE E COZART whose telephone number is (571)272-4528. The examiner can normally be reached Monday - Friday 8:30am - 7:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERMIE E COZART/Primary Examiner, Art Unit 3799
March 30, 2026
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