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 .
Status of Claims
Claims 1-6, 8-13 and 15-19 are pending and subject to examination in this Office action. Claims 7 and 14 were canceled.
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 18 December 2025 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted to date are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
Drawings
The drawings are objected to for at least the following reasons:
Figures 1-9 contain excessive shading making it difficult to discern the details depicted therein, have a line quality that is too light or pixelated to be reproduced (weight of all lines and letters must be heavy enough to permit adequate reproduction), text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible), or contain what appears to be a photographic image of a view that is capable of being illustrated as a line drawing.
Corrected drawing sheets (i.e., line drawings) in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 8 is objected to because of the following informalities: “frustconical “ should be --frustoconical--. 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.
Claims 1-6, 8-13 and 15-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding independent claim 1 (head profile limitation), the term “the building” is recited. This term lacks proper antecedent basis.
Regarding claim 1 (guide rail limitation), the term “a building” is recited. Is this term intended to refer back to the previously recited building or to a second building?
Regarding claim 1 (wherein clause), as presently drafted, it is unclear as to whether “a base track” is required or optional structure. Clarification is requested.
Regarding claim 8, the term “the length” is recited. This term lacks proper antecedent basis.
Regarding claim 9, the term “the height” is recited. This term lacks proper antecedent basis.
Regarding claim 10, the term “the mating means” is recited. This term lacks proper antecedent basis.
Regarding claim 12, the term “the guiderails” is recited. Is this term referring to the previously recited “guide rails”, or to some other structure?
Accordingly, the pending claims will be interpreted as best understood.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-6, 8-13 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by WO 2012/024742 A1 (cited by Applicant).
Regarding independent claim 1, as best understood, WO '742 describes a prefabricated wall system (figs. 1-15) comprising:
a wall panel comprising a rear board (124, see p. 12 ll. 7-9), a front board (124) forming an internal face for a room, said front board spaced away from said rear board to form a cavity;
a first side stud and a second side stud (70), each side stud connected to the front and rear boards on opposing sides of the cavity to form the panel (fig. 9); and
a head track (16) and a base track (18), each track connected to the front and rear board and the first and second side stud at a top and bottom of said boards and studs respectively;
a deflection head profile positioned adjacent to a top portion of the wall panel for holding the wall panel in position whilst allowing for deflection in the building (Figs. 2 and 3); and
a guide rail (38) provided on a floor of a building, said guide rail comprising a raised profile (42) configured to be received within a correspondingly shaped recessed portion (45) in the base track.
Regarding claim 2, further comprising a central deflection profile secured to a ceiling against which the deflection head profile is secured (see e.g., Figs. 1-15).
Regarding claim 3, wherein the central deflection profile comprises insulation for improving a thermal performance of the system (see e.g., Figs. 1-15).
Regarding claim 4, further comprising a fire sealant for sealing the deflection head profile and improving fire protection of the system (see e.g., Figs. 1-15).
Regarding claim 5, wherein the fire sealant comprises an intumescent sealant (see e.g., Figs. 1-15).
Regarding claims 6 and 16-19, wherein the deflection head profile comprises a substantially L-shaped cross-section (see e.g., Figs. 1-15).
Regarding claim 8, wherein the raised portion comprises a substantially frustoconical cross-section, said raised portion provided along the length of the guide rail (see e.g., Figs. 1-15).
Regarding claim 9, wherein the recessed portion extends less than the height of the raised portion, such that a gap is formed between the wall panel and the floor when the recessed portion receives the raised portion (see e.g., Figs. 1-15).
Regarding claim 10, wherein multiple panels are provided, each panel secured to an adjacent panel via the mating means and received in the guide rail (see e.g., Figs. 1-15).
Regarding claim 11, wherein first and second wall panels are arranged parallel to each other on separate guide rails to form a party wall (see e.g., Figs. 1-15).
Regarding claim 12, wherein an insulated sheet is provided between the guiderails to lie between the first wall panel and the second wall panel (see e.g., Figs. 1-15).
Regarding claims 13 and 15, wherein deflection head profiles are provided adjacent to each wall panel to secure each panel against each other (see e.g., Figs. 1-15).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Please be advised that 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6, 8-13 and 15-19 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-18 of co-pending Application No. 18/394,377.
Although the conflicting claims are not identical, they are not patentably distinct from each other because all of the structural elements recited in the rejected claims are present in the noted claims of the '377 application or they are obvious variants.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Refer to the attached Form PTO-892.
Authorization for Email Communication – In the event Applicant wishes to communicate with the Examiner via electronic mail, written authorization should be provided in Applicant’s next response. See MPEP § 502.03. The following is a sample authorization form which may be used by Applicant:
Recognizing that Internet communications are not secure, we hereby authorize the USPTO to communicate with any authorized representative concerning any subject matter of this application by electronic mail. We understand that a copy of these communications will be made of record in the application file.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY MINTZ whose telephone number is (571)270-7327. The examiner can normally be reached on M-Th 0730 - 1630 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached on 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RODNEY MINTZ/Primary Examiner, Art Unit 3635