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 9/19/25. Accordingly the application has been amended.
Claim Objections
Applicant is advised that should claim 14 be found allowable, claim 16 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11105094 in view of US PG Pub 20160319507.
US Patent 11105094 claims a foam cement form with surface facing cement and a surface facing a ground support that is elongate and wedge shaped and includes a connector groove that is open and upward facing in a vertical direction to receive a connecting member, and does not claim stake openings. US Patent 11105094 does not expressly disclose an inner insert separate from the cement form as claimed. US PG Pub 20160319507 discloses a foam cement form that includes an inner insert having a ground facing surface and a cement facing surface, that is elongate and wedge shaped and wherein the cement form includes stake openings in the inclined surface.
At the time the invention was effectively filed it would have been obvious to one of ordinary skill in the art to pursue known design options and modify the cement form of US Patent 11105094 to include a foam inner insert and cement form with stake openings as presently claimed to achieve the predictable result of a cement form that forms a desired cement structure and remains securely in place during the cement forming process.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11808002 in view of US PG Pub 20160319507. US Patent 11808002 claims a cement form comprising a ground facing surface and a cement facing surface having an elongated shape, where two cement forms are positioned end to end. US Patent 11808002 does not claim a foam inner insert and a cement form having a connector groove that is open facing and upward and wedge shaped with stake openings in the inclined surface. US PG Pub 20160319507 discloses a foam cement form that includes an inner insert having a ground facing surface and a cement facing surface, that is elongate and wedge shaped and wherein the cement form includes stake openings in the inclined surface.
At the time the invention was effectively filed it would have been obvious to one of ordinary skill in the art to pursue known design options and modify the cement form of US Patent 11808002 to include a foam inner insert and cement form with stake openings as presently claimed to achieve the predictable result of a cement form that forms a desired cement structure and remains securely in place during the cement forming process.
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) 1-20 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Boyce et al (20160319507).
Claim 1. Boyce discloses a cement form assembly comprising:
a cement form (12 figure 1) comprising:
a ground facing surface (36, fig 1) of the cement form extending horizontally on a ground support surface; and
a cement facing surface (34, fig 1) of the cement form extending vertically the configured to contact cement;
wherein the cement form has an elongated shape (as seen in figure 1); and
wherein the cement form is made, at least partially, of a foam material (as noted at least at the abstract and throughout the disclosure); and
an inner insert (14) separate from the cement form and configured to be spaced apart from the cement form (as seen in the figures and noted in the disclosure), wherein the inner insert comprises:
a ground facing surface (62) of the inner insert extending horizontally on the ground support surface; and
a cement facing surface (60) of the inner insert extending vertically and configured to contact the cement.
Claim 2. The cement form assembly of claim 1 wherein the inner insert has an elongated shape (as seen in the figures).
Claim 3. The cement form assembly of claim 2 wherein the inner insert has a wedge-shaped cross-sectional shape (as seen in at least figure 1).
Claim 4. The cement form assembly of claim 1 wherein the cement form has a wedge-shaped cross-sectional shape (as seen in the figures).
Claim 5. The cement form assembly of claim 1 wherein the inner insert is made, at least partially, of a foam material (as noted throughout the disclosure).
Claim 6. The cement form assembly of claim 1 wherein the cement form defines a connector groove (42).
Claim 7. The cement form assembly of claim 6 wherein the connector groove is accessible along a top side of cement form (as seen in figure 1).
Claim 8. The cement form assembly of claim 6 wherein the connector groove is open facing (as seen in the figure 1).
Claim 9. The cement form assembly of claim 6 wherein the connector groove faces generally vertically or generally in an upward direction (as seen in figure 1).
Claim 10. The cement form assembly of claim 6 wherein the connector groove is configured to receive a connecting member (as seen in figures 1-3 and noted throughout the disclosure).
Claim 11. The cement form assembly of claim 1 comprising at least two cement forms positioned end to end lengthwise and coupled together (as noted at least at figure 11 and noted throughout the disclosure).
Claim 12. The cement form assembly of claim 1 comprising an inclined surface (38) positioned at an incline relative to the ground facing surface and extending upward in a direction towards the cement facing surface (as seen in figure 1).
Claim 13. The cement form assembly of claim 12 wherein the cement form defines a plurality of stake openings (44) in the inclined surface.
Claim 14. Boyce discloses a method of forming a cement form assembly comprising:
positioning a cement form (12) on a ground support surface, the cement form comprising:
a ground facing surface (36) of the cement form extending horizontally on the ground support surface; and
a cement facing surface (34) of the cement form extending vertically;
positioning an inner insert (14) on the ground support surface, the inner insert separated from the cement form (as seen in figures 1-2 and noted throughout the disclosure), the inner insert comprising:
a ground facing surface (62) of the inner insert extending horizontally on the ground support surface; and
a cement facing surface (60) of the inner insert extending vertically; and
positioning cement (26) in contact with the cement facing surface of the cement form and the cement facing surface of the inner insert (as seen in figure 3);
wherein the cement form and the inner insert are each made, at least partially, of a foam material (as noted in the abstract and throughout the disclosure).
Claim 15. The method of claim 14 wherein the inner insert has an elongated shape (as seen in figures 1-2).
Claim 16. The method of claim 14 wherein the inner insert is made, at least partially, of a foam material (as noted at least in the abstract and throughout the disclosure).
Claim 17. The method of claim 14 wherein the cement form has a wedge-shaped cross- sectional shape (as seen in figures 1-2 and noted throughout the disclosure).
Claim 18. The method of claim 14 wherein the cement form defines a connector groove (42).
Claim 19. The method of claim 18 further comprising positioning a connecting member (16, fig 2-3) in the connector groove.
Claim 20. The method of claim 14 wherein the inner insert has a wedge-shaped cross-sectional shape (as seen in figures 1-2 and noted throughout the disclosure).
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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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.
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JESSICA L. LAUX
Examiner
Art Unit 3635
/JESSICA L LAUX/ Primary Examiner, Art Unit 3635