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 1-22 are pending. Claims 1-18 are subject to examination in this Office action. Claims 19-22 are withdrawn (non-elected).
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-18) 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 3 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 1-18 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 term “the prefabricated wall panel” is recited. As “one or more prefabricated wall panels” were previously recited, to which previously recited panel is this term referring?
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 3, the term “the length” is recited. This term lacks proper antecedent basis.
Regarding claim 4, the term “the height” is recited. This term lacks proper antecedent basis.
Regarding claim 10, the term “the guiderails” is recited. Is this term referring to the previously recited “guide rails”, or to some other structure?
Regarding claims 14 and 15, the term “the panel” is recited. To which previously recited panel is this term referring?
Regarding claim 15, the term “the height” is recited. This term lacks proper antecedent basis.
Regarding claim 15, the term “the passage” is recited. To which previously recited passage is this term referring?
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 1-18 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 system for forming a wall (figs. 1-15) comprising:
one or more prefabricated wall panels each 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; 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 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; 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 system further comprises 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 3, wherein the raised portion comprises a substantially frustoconical cross-section, said raised portion provided along the length of the guide rail (Fig. 3).
Regarding claim 4, wherein the recessed portion extends less than the height of the raised portion, such that a gap is formed between the base track and the floor when the recessed portion receives the raised portion (see e.g., Fig. 3).
Regarding claim 5, wherein the gap comprises a front gap beneath the front board and a rear gap beneath the rear board, and wherein at least the front gap is sealed by a fire sealant (see e.g., Figs. 1-15).
Regarding claim 6, wherein the fire sealant is an intumescent fire sealant (see e.g., Figs. 1-15).
Regarding claim 7, wherein multiple panels are provided, each panel secured to an adjacent panel via the mating means and received in the guide rail (Fig. 1).
Regarding claim 8, 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 9, wherein the rear board of each wall panel is a cardboard liner (see e.g., Figs. 1-15).
Regarding claim 10, wherein insulation is provided between the guiderails to lie between the first wall panel and the second wall panel in a void of the party wall between the rear boards (see e.g., Figs. 1-15).
Regarding claim 11, wherein the first wall panel and the second wall panel are separated by a central deflection profile to brace the panels (Fig. 2).
Regarding claim 12, wherein each wall panel is secured to a soffit using a deflection profile (Fig. 2).
Regarding claim 13, further comprising intumescent fire sealant between the deflection profile and the soffit (see e.g., Figs. 1-15).
Regarding claim 14, wherein the side studs and the tracks comprise metal framework to form a rigid frame for the panel (Fig. 1).
Regarding claim 15, wherein the panel further comprises a wireway secured to the front board, said wireway provided within the cavity and comprising one or more passages, said passages aligned along the height of the panel for constraining service cabling fed through the panel within the passage (Figs. 14 and 15).
Regarding claim 16, wherein 2 or more passages are provided, each passage running parallel to each other (Figs. 14 and 15).
Regarding claim 17, wherein the front board comprises a gypsum based board (see e.g., Figs. 1-15).
Regarding claim 18, wherein the front board sits in front of the side studs and tracks to hide the side studs and tracks behind the front board (Figs. 12 and 13).
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 1-18 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-6, 8-13 and 15-19 of co-pending Application No. 18/394,290.
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 '290 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.
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/RODNEY MINTZ/Primary Examiner, Art Unit 3635