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
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/29/26.
Applicant's election with traverse of Group I in the reply filed on 1/29/26 is acknowledged. The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because both of the inventions require separate, burdensome searches for the unique combinations of features critical to each invention. As set forth in the restriction requirement mailed 10/30/25, the inventions are related as combination and subcombination. In the instant case, the combination as claimed does not require first and second tie flanges and the subcombination has separate utility such as a connector for rafters, studs or walls. The examiner emphasizes, a search of the combination does not require the same detailed search of ties usable for rafters, studs, walls or other building components that are unrelated to joists and decking panels as required by the combination. The recitation “joist tie” in the preamble of the subcombination imparts minimal structure and a construction tie usable with joists would be read on by the claimed subcombination to the joist tie.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/12/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the claim fasteners that operatively couple the decking panels, the joist tie, and the first proximal end of the first joist or the second proximal end of the second joist by extending through the one or more decking panels, the tie web, and the first proximal end of the first joist or the second proximal end of the second joist as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets 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. Are they the fasteners shown in Fig. 14? These fasteners are unlabeled.
Reference numeral 120 is identified in the specification as a tie rib. However, reference numeral 120 in Fig. 6 does not point to the tie rib.
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.
Claims 1-14 and 18-20 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 and 18 each recite “wherein the joist tie minimizes any rise in the one or more decking panels at the location of the joist tie to a tie web thickness of the joist tie.” It is unclear what is meant by “to a tie web thickness of the joist tie”. Is it supposed to read, “due to a tie web thickness of the joist tie”? Further, “minimizes any rise” is subjective and indefinite. Any level of rise could reasonably be considered “minimal”.
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.
Claims 1-14 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 20-21 of U.S. Patent No. 11,898,351. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed invention of ‘351 essentially anticipates the instant invention.
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.
Claims 1, 3, 8, 10-14, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher, US 4,476,662 in view of Hasselqvist et al., US 4,069,638 and Rongoe, Jr., US 4,597,233.
Regarding claims 1 and 18:
Fisher discloses a structural decking system (Fig. 1) and a method of assembling a structural decking system comprising:
one or more support members (10);
a first joist (6) having first opposing ends and at least one first joist seat, the first joist seat comprising a first chord having a first cavity (the central space, refer to Figs. 2 and 3), wherein a first proximal end of the first joist is operatively coupled to a first support member;
a second joist (8) having second opposing ends and at least one second joist seat, the second joist seat comprising a second chord having a second cavity, wherein a second proximal end of the second joist is operatively coupled to the first support member in series with the first proximal end;
a joist tie (plate 48) comprising a tie web (54),
one or more connectors (welds, Fig. 3 and col. 3, ll. 1-14) operatively coupling the joist tie to the first joist and the second joist; and
wherein the joist tie minimizes any rise in decking panels at the location of the joist tie due to a tie web thickness of the joist tie (the joist tie has a relatively low profile).
Fisher implies a decking but does not expressly disclose one or more decking panels extending over the joist tie and a portion of the first joist and the second joist
Rongoe discloses a structural decking system having one or more decking panels (23, refer to Fig. 3) extending over a portion of a first joist and a second joist (both labeled 27).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art (PHOSITA) to provide a decking panel as suggested by Rongoe over the joist tie and joists of Fisher in order to support a concrete roofing.
Fisher discloses a joist tie but does not expressly disclose one or more ribs in the tie web.
Hasselqvist discloses an end to end beam connection (Fig. 19), a tie (30) having one or more ribs (11), wherein the one or more ribs have a width less than the first cavity opening (2) of the first cavity and the second cavity opening of the second cavity (the width is less in order to fit within the opening), wherein a first portion of the one or more ribs of the tie is located within the first cavity of the first member and a second portion of the one or more ribs of the tie is located within the second cavity of the second member.
Before the effective filing date of the invention, it would have been obvious to a PHOSITA to provide a rib as suggested by Hasselqvist to the joist tie of Fisher in order to improve the quality of the connection (col. 2, ll. 33-36) and to help align the joist tie with the joists.
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Regarding claims 3 and 20:
Fisher discloses wherein the one or more connectors comprise one or more welds (40, 42, Fig. 3) that operatively couple the joist tie to the first proximal end of the first joist and the second proximal end of the second joist before installing the one or more decking panels over the joist tie.
Regarding claim 8:
Hasselqvist discloses wherein the rib is a single rib extending a length of the tie, wherein the first portion of the single rib is located within the first cavity of the first seat and the second portion of the single rib is located within the second cavity of the second seat.
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Regarding claim 10:
Fisher modified in view of Hasselqvist reasonably suggests wherein the one or more ribs have a height that is greater than the tie web thickness of the tie web (refer to Fig. 19 of Hasselqvist, the height is significantly more than the thickness).
Regarding claim 11:
Fisher in view of Hasselqvist and Rongoe discloses the claimed invention except for the claimed tie web thickness range and the rise in the one or more decking panels. It would have been an obvious matter of design choice to change the tie web thickness to be in the range of 0.15 and 0.25 inches such that the rise of the decking panels is less than or equal to 0.25 inches, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). There would be no unexpected or unpredictable result obtained from specifically making the tie 0.15 to 0.25 inches. There is no evidence that the claimed dimensions not specifically taught by Fisher provide a criticality that would be unachievable and unexpected with a reasonable amount of experimentation. The tie of Fisher appears to be low profile as shown in Fig. 1 of Fisher.
Regarding claims 12 and 13:
Fisher discloses wherein the first chord is a first upper chord/ upper seat chord(20), and wherein the second chord is a second upper chord/ upper seat chord (22), wherein the first joist seat is formed from the first upper chord and first lower seat chord (16), and wherein the second joist seat is formed from the second upper chord and a second lower seat chord (18).
Regarding claim 14:
Fisher discloses wherein the first and second cavities are each formed of two angles (49) operatively coupled to each other, wherein the two angles form each respective cavity.
Allowable Subject Matter
Claims 2, 4-7, 9 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, if a terminal disclaimed is submitted to overcome the double patenting rejection and if amended to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 2 and 19, the prior art of record could not be modified to include one or more fasteners operatively coupling and extending through the decking panels, the joist tie, the ends of the joists devoid of improper hindsight reasoning.
Regarding claims 4-7, the prior art of record could not be modified to include one or more tie flanges operatively coupled to the tie web devoid of improper hindsight reasoning.
Regarding claim 9, the prior art could not be modified to include two or more ribs devoid of improper hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT W HERRING whose telephone number is (571)270-3661. The examiner can normally be reached Monday-Thursday 7:30a-6:00p MT.
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 Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENT W HERRING/Primary Examiner, Art Unit 3633