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 .
Election/Restrictions
Applicant’s election of Group II, claims 15-25 and 30 in the reply filed on 05/26/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 1-14, 26-29, and 31033 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim.
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 17 is 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.
Claim 17 recites “a standard intermodal shipping container.” The term “standard” renders the scope of the claim as indefinite because it is unclear as to what parameters would qualify a container as “standard.”
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) 15, 19, 21, 22, 24, and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Publication No. 2017/0244225 to Chen et al. (“Chen”).
Regarding claim 15, Chen discloses a temporary wall system 300 for use in temporarily converting a shipping container into a living space or workspace, the shipping container having a substantially rectangular access opening having a perimeter, wherein the wall system comprises: a wall 310 having exterior dimensions suitable to allow the perimeter of the wall to at least substantially mate with the perimeter of the container's access opening, wherein: the wall 310 defines an access opening 315 that is sized to allow an adult human to pass from one side of the wall to the other through the access opening, and the wall 310 comprises a door 320 that is mounted so that the door 320 can be selectively moved between: (1) a first position in which the door obstructs the access opening to prevent passage of individuals through the access opening; and (2) a second position in which the door does not sufficiently obstruct the access opening to prevent passage of individuals through the access opening; and a power hookup E for powering one or more accessories supported by the wall.
Regarding claim 19, Chen discloses that the power hookup E is attached adjacent the wall 310.
Regarding claim 21, Chen discloses that the wall 310 comprises a light (light from display 313) that is mounted adjacent the wall, the light being adapted to be powered by power supplied by the power hookup.
Regarding claim 22, Chen discloses that the wall 310 comprises a power outlet 311 that is mounted adjacent the wall, the power outlet being adapted to be powered by power from the power hookup E.
Regarding claim 24, Chen discloses that the wall 310 is dimensioned to allow the wall to be operatively positioned within the shipping container while one or more exterior doors 120 associated with the shipping container are closed to prevent access to the wall from outside the shipping container.
Regarding claim 30, Chen discloses that the wall system 300 is a temporary wall system for use in temporarily converting the shipping container into a living space or workspace.
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) 16-18 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen.
Regarding claim 16, Chen does not expressly disclose that the wall has a width of about 8 feet and a height of about 8.5 feet. It has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A.
Regarding claim 17, Chen does not expressly disclose that the wall has a width and a height that is between about 95% and about 100% of the width and height of a standard intermodal shipping container. It has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A.
Regarding claim 18, Chen does not expressly disclose that the wall has a width and height that is between about 95% and about 100% of the width and height of a high-cube intermodal shipping container. It has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A.
Regarding claim 25, Chen does not expressly disclose that the shipping container has length selected from a group consisting of: (1) about 10 feet; (2) about 20 feet; and (3) about 40 feet. It has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of U.S. Patent No. 10,590,671 to Jee et al. (“Jee”).
Regarding claim 20, Chen does not disclose that the wall defines an environmental control opening that is dimensioned for receiving a heating/air-conditioning unit; and the wall comprises a shelf disposed adjacent a bottom portion of the opening and that is configured for supporting the heating/air-conditioning unit so that an output portion of the heating/air-conditioning unit is at least substantially aligned with the environmental control opening.
Jee discloses a modular shelter comprising an environmental control opening (Jee 128) that is dimensioned for receiving a heating/air-conditioning unit (Jee 130); and the wall comprises a shelf (Jee 972) disposed adjacent a bottom portion of the opening and that is configured for supporting the heating/air-conditioning unit so that an output portion of the heating/air-conditioning unit is at least substantially aligned with the environmental control opening in order to control temperature within the shelter.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the system of Chen to have the wall define an environmental control opening that is dimensioned for receiving a heating/air-conditioning unit; and the wall comprises a shelf disposed adjacent a bottom portion of the opening and that is configured for supporting the heating/air-conditioning unit so that an output portion of the heating/air-conditioning unit is at least substantially aligned with the environmental control opening as taught in Jee with a reasonable expectation of success because it would predictably provide support for a unit to condition the shelter.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of GB2293596 to Tosetto (“Tosetto”).
Regarding claim 23, Chen does not disclose that the door comprises an escape hatch.
Tosetto discloses a container (Tosetto 1) wherein a door (Tosetto 10) comprises an escape hatch (Tosetto 13).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the system of Chen to have the door comprise an escape hatch as taught in Tosetto with a reasonable expectation of success because it would predictably provide access within the container through a smaller opening.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,767,162 in view of Chen and claims 1-15 of U.S. Patent No. 11,254,494 in view of Chen. Claims 1-20 of U.S. Patent No. 11,767,162 and claims 1-15 of U.S. Patent No. 11,254,494 each contain limitation of the pending claim except for a power hookup for powering one or more accessories supported by the wall. Chen discloses a power hookup E for powering one or more accessories supported by the wall. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the patented claims to have a power hookup E for powering one or more accessories supported by the wall as taught in Chen with a reasonable expectation of success because it would predictably provide power to the interior space of the container.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
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/CHRISTINE T CAJILIG/Primary Examiner, Art Unit 3633
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