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 1-16 are pending. Claims 1-6 are subject to examination in this Office action. Claims 7-16 are withdrawn (non-elected).
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-6) in the reply filed on 9 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 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 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 (wherein clause), the word “can” is recited. Is this word intended to define a required or optional condition? Clarification is requested.
Regarding claim 4, the term “the void” is recited. This term lacks proper antecedent basis.
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 1-3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by WO 2012/024742 A1 (cited by Applicant).
Regarding independent claim 1, WO '742 describes a prefabricated wall panel (fig. 1-15) 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 (p. 12, ll. 9-10); and
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 (fig. 9); and
a wireway (128, 142; fig. 14, 15) disposed within the cavity, wherein the wireway runs substantially from a base of the wall panel to a top of the wall panel to allow services to pass through the panel, and wherein the wireway constrains cabling of the services therein (p. 12, ll. 7-30); and
wherein the first side stud comprises a male mating means (72) and the second side stud comprises a female mating means (76) such that the prefabricated wall panel can mate with an adjacent prefabricated wall panel to form a continuous internal wall surface.
Regarding claim 2, wherein the wireway comprises one or more channels (128, 142; fig. 14, 15) that run substantially through the wireway.
Regarding claim 3, wherein the panel further comprises: one or more steel support rails (122) connected across said side studs and between the rear board and the wireway for supporting the wireway (Fig. 14).
Claim Rejections - 35 USC § 103
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4-6 are rejected under 35 U.S.C. 103 as unpatentable over WO '742 as applied above, and further in view of Jeffers (U.S. Patent No. 6,158,178 – cited by Applicant).
Regarding claims 4-6, WO '742 does not appear to expressly describe a plurality of tabs oriented and positioned as claimed. As evidenced by Jeffers, it was old and well-known in the art to utilize foldable tabs (82; Fig. 5: punched and folded away) in such wall panel constructions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize foldable tabs oriented and positioned as claimed with a reasonable expectation of success because it would have bolstered the structural integrity of the wall panel. Such combination of known prior art elements that merely yields predictable results would have been obvious to one skilled in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16.
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.
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/RODNEY MINTZ/Primary Examiner, Art Unit 3635