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 .
Acknowledgment is made of the amendment filed 3/23/26. Accordingly the application has been amended.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12,15 and all claims depending therefrom are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not reasonably convey to one skilled in the relevant art “a height of the first region and a height of the second region is greater than a height of the third region”. The specification identifies a height H2 that is a height of the first/second side of the first and second regions and a height H3 that is a height of the third region, where H2 is smaller than and H3, but does not disclose a height of the first region and a height of the second region is greater than a height of the third region.
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.
Claims 1-12,15-19 and all claims depending therefrom are 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. Claims 1, 16 recite “an industry standard rectangular bearing bar”, it is unclear what is encompassed by the relative term “industry standard” causing confusion regarding the scope of the claimed invention.
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) 6-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by JP 1070953 (submitted by applicant in the IDS dated 5/30/25).
Claim 16. JP1070953 discloses a grating comprising:
a frame (as noted in the annotated figure below);
a bar assembly operatively engaged with the frame; wherein the bar assembly comprises:
a plurality of bearing bars (as noted in the annotated figure below);
a plurality of crossbars (as noted in the annotated figure below), wherein the plurality of crossbars is oriented orthogonal to the plurality of bearing bars;
wherein each bearing bar of the plurality of bearing bars comprises:
an rolled member (where it is disclosed as steel, see below) having a first end and a second end opposite one another and spaced a distance apart substantially equal to a first length (as seen in the annotated figure below where there is a first end at a top and a second opposite end at the bottom);
a third region (as noted in the annotated figure below) extending between the first end and the second end;
wherein the first end and the second end are substantially equal in width to one another and are of a first width (as seen in the figures);
wherein the third region is spaced substantially equidistant from the first end and the second end (as seen in the figures);
wherein the third region is of a second width, and the second width is less than the first width (as seen in the figures);
wherein the third region is connected to the first end via a side section which is oriented at an angle of more than 90 degrees relative to the third region (as seen in the figures); and
wherein the third region is connected to the second end via another side section that is oriented at an angle of more than 90 degrees relative to the third region (as seen in the figures); and
wherein each bearing bar of the plurality of bearing bars provides a weight reduction of at least 20% relative to an industry standard rectangular bearing bar of identical height while maintaining an equal or greater area moment of inertia (where JP 1070953 has an hour glass shape, the reduction of at least 20% relative to an industry standard rectangular bear bar of identical height is a function of the hourglass shape as noted in applicants specification at paragraph 0068, thus JP1070953 anticipates the claimed limitation).
It should be noted that in claim 16 the phrase “rolled member” is considered a product-by-process. The patentability of the product does not depend on its method of production. Determination of patentability is based on the product itself. See MPEP 2113. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.Cir.1985). In the instant case the product of the prior art is disclosed as steel and therefore is capable of being made by the rolled process.
Claim 17. The grating according to claim 16, further comprising:
a first side and a second side opposite and substantially equal in length to one another and extending between the first end and the third region (as seen in the annotated figure below); and
a third side and a fourth side opposite and substantially equal in length to one another and extending between the second end and the third region (as seen in the figures).
Claim 18. The grating according to claim 16, further comprising a plurality of channels (as noted in the annotated figure below) defined in the rolled member, wherein each crossbar of the plurality of crossbars is received within a channel of the plurality of channels (as seen in the figures).
Claim 19. The grating according to claim 18, wherein the channel is defined in the first end (as seen in the figures).
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) 1-12,15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 1070953 (submitted by applicant in the IDS dated 5/30/25).
Claim 1. JP1070953 discloses a grating comprising:
a frame (as noted in the annotated figure below);
a bar assembly operatively engaged with the frame; wherein the bar assembly comprises:
a plurality of bearing bars (as noted in the annotated figure below);
a plurality of crossbars (as noted in the annotated figure below), wherein the plurality of crossbars is oriented orthogonal to the plurality of bearing bars;
wherein each bearing bar of the plurality of bearing bars comprises:
an rolled member (where it is disclosed as being steel, see below) having:
a first region and a second region located opposite one another (as noted in the annotated figure below);
a third region (as noted in the annotated figure below) extending between the first region and the second region;
a first corner and a second corner provided where the first region transitions to the third region (as noted in the annotated figure below);
a third corner and a fourth corner (as noted in the annotated figure below) provided where the second region transitions to the third region; and
wherein the first corner, the second corner, the third corner, and the fourth corner are greater than 90 degrees (as noted in the annotated figure below);
wherein each bearing bar of the plurality of bearing bars provides a weight reduction of at least 20% relative to an industry standard rectangular bearing bar of identical height while maintaining an equal or greater area moment of inertia (where JP 1070953 has an hour glass shape, the reduction of at least 20% relative to an industry standard rectangular bear bar of identical height is a function of the hourglass shape as noted in applicants specification at paragraph 0068, thus JP1070953 anticipates the claimed limitation)..
It should be noted that in claim 1 the phrase “rolled member” is considered a product-by-process. The patentability of the product does not depend on its method of production. Determination of patentability is based on the product itself. See MPEP 2113. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed.Cir.1985). In the instant case the product of the prior art is disclosed as steel and therefore is capable of being made by the rolled process.
JP1070953 does not expressly disclose the dimensions of the height of the first, second, or third region, and thus does not expressly disclose wherein a height of the first region and a height of the second region is greater than a height of the third region. Applicant has not disclosed that a height of the first region and a height of the second region is greater than a height of the third region solves any stated problem or is for any particular purpose, rather the specification discloses variable height configurations, but does not disclose a height of the first region and a height of the second region is greater than a height of the third region. Moreover, it appears that the grating of JP1070953, or applicant’s invention, would perform equally well with a variety of height ratios.
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was filed to pursue known design options to optimize strength and inertia properties, and have modified JP1070953 such that t a height of the first region and a height of the second region is greater than a height of the third region because such a modification would have been considered a mere design consideration which fails to patentably distinguish over JP1070953.
Claim 2. The grating according to claim 1, wherein the rolled member is symmetrical about a midline located equidistant between a first end of the first region and a second end of the second region (as seen in the figures).
Claim 3. The grating according to claim 1, wherein the first region and the second region are mirror images of one another (as seen in the figures).
Claim 4. The grating according to claim 1, wherein the first region and the second region each comprises:
an end (as noted in the annotated figure below);
a first side section (as noted in the annotated figure below) and a second side section (as noted in the annotated figure below) opposite one another and extending outwardly from opposite sides of the end; and
a third side section and a fourth side section opposite one another and extending outwardly at an angle from a respective one of the first side section and the second side section (as seen in the annotated figure below).
Claim 5. The grating according to claim 4, wherein the angle is less than ninety degrees (as seen in the annotated figure below).
Claim 6. The grating according to claim 4, wherein the first side section and the second side section are substantially equal in length with one another, and wherein the third side section and the fourth side section are substantially equal in length with one another (as seen in the annotated figure below).
Claim 7. The grating according to claim 4, wherein the first side section and the second side section are substantially perpendicular to the end (as seen in the figures).
Claim 8. The grating according to claim 1, wherein the third region comprises:
a first side section and a second side section opposite one another (as seen in the annotated figure below) and extending between the first region and the second region; and
wherein the first side section and the second side section of the third region are substantially parallel and equal in length to one another (as seen in the figures).
Claim 9. The grating according to claim 1, wherein an end of the first region and an end of the second region are of a first width (as seen in the figures); wherein the first width is measured between a first side section and a second side section of the respective first region and second region (as seen in the figures);
wherein the third region is of a second width measured between a first side section and a second side section of the third region (as seen in the figures); and wherein the second width is smaller than the first width (as seen in the figures).
Claim 10. The grating according to claim 1, further comprising at least one channel (as noted in the annotated figure below) defined in the rolled member, wherein each of the at least one channel receives a crossbar of the plurality of crossbars therein (as seen in the figures).
Claim 11. The grating according to claim 10, wherein the at least one channel is defined in a first end of the first region and extends for a distance inwardly into the first region and towards the second region (where the first region is defined at the top as seen in the figures).
Claim 12. The grating according to claim 10, wherein the at least one channel extends from a first side section of the first region through to a second side section of the first region (as seen in the figures).
Claim 15. The grating according to claim 11, wherein an uppermost section of the crossbar extends outwardly beyond a first end of the first region of the bearing bar (as seen in the figures where the bar extends above the upper surface of the end of the first region).
PNG
media_image1.png
680
874
media_image1.png
Greyscale
PNG
media_image2.png
391
525
media_image2.png
Greyscale
PNG
media_image3.png
394
379
media_image3.png
Greyscale
PNG
media_image4.png
411
475
media_image4.png
Greyscale
Response to Arguments
Applicant's arguments filed 3/23/26 have been fully considered but they are not persuasive. Applicant’s arguments are drawn to the newly amended claim limitations which were not previously considered. Regarding the arguments of a 20% relative weight reduction as noted in the remarks at pages 10-11 JP1070953 does disclose the amended claim limitations as noted in the rejection above. Further it is additionally noted that the specification at paragraph 0068 discloses that the achieved weight reduction is only result of the hourglass shape of the bearing bar. The bearing bar of JP1070953 discloses an hourglass shape, thus achieves the same desired and claimed weight reduction.
Regarding applicants remarks drawn to the newly added limitations “a height of the first region and a height of the second region is greater than a height of the third region”, it is noted this is not a feature disclosed in the specification. Applicant’s argument that JP1070953 cannot teach the claimed dimensions because any change in the rations between the height of each region substantially changes the resulting grating is not persuasive. JP1070953 is silent regarding the dimension and gives no criticality to the dimensions. Applicant appears to provide conjecture as to the dimensions of JP1070953 based on drawings not indicated to be to scale. This is not persuasive to overcome the rejection as presented above. Thus applicants arguments do not outweigh the evidence of obviousness.
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 JESSICA LAUX whose telephone number is (571)272-8228. The examiner can normally be reached M-F 7:30-3:30.
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 at 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.
JESSICA L. LAUX
Examiner
Art Unit 3635
/JESSICA L LAUX/ Primary Examiner, Art Unit 3635
Prosecution Insights