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 .
Claim Objections
Claim 1 is objected to because of the following informalities: “a” is omitted before “pair” in line 1 and before “web” in line 2.
Claim 20 is objected to because of the following informalities: “comprising” is recited twice in line 1 (i.e. “comprising, comprising”).
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.
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 1-11, 13-15 and 20-21 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.
Each of claims 1 and 20 specify “a section of beam” in the preamble of the claim. The claims then specify that the section of beam comprises T-plate connectors. As best understood, the claim is directed to a beam from which T-plate connectors may be formed, as shown in Applicant’s figure 12 reproduced below. It is unclear if applicant is intending to claim the section of beam as recited by the preamble, or the T-plate connectors described in the body of the claims. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In the instant case, it does not matter if T-plate connectors of the prior art were formed from a larger section of beam or by another method. The product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process.
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If applicant is intending to claim “a section of beam” with first and second flanges and a web integrally extending between the flanges wherein said section of beam has within it first and second T-plate connectors, theoretically, any I-beam inherently includes the claimed T-plate connectors since they may be cut out from a section of beam as suggested by Fig. 12 of Applicant’s disclosure.
Since it is unclear if Applicant intends to claim the section of beam from which T-plate connectors are cut or the T-plate connectors that are cut from a section of beam, for purposes of examination, it is assumed that Applicant intends to claim the T-plate connectors set forth by the body of the claim with the implication that the connectors were formed by a section of a beam.
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.
Claims 1-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeuchi et al., US 2004/0244330.
Regarding claim 1:
Takeuchi discloses a section of an I-beam (each connector may be part of a section of an I-beam prior to having been made into a connector) a pair of structural connectors (4) used in a moment frame connection, comprising:
a first T-plate connector (each labeled 4, refer to Figs. 1 and 8) that may be taken from a blank cut from a beam, the T-plate connector comprising;
a first vertical plate (5) formed from a first flange of the beam, and
a first horizontal plate (6) extending from and integrally formed with the vertical plate, the first horizontal plate formed from a web of the beam; and
a second T-plate connector (same structure as the first) taken from the blank, the second T-plate connector comprising;
a second vertical plate formed from a second flange of the beam, and
a second horizontal plate extending from and integrally formed with the second vertical plate, the second horizontal plate formed from the web of the beam.
The determination of patentability in a product-by-process claim is based
on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. Takeuchi does not specify the method by which the T-plate connectors were produced but they could be taken from a blank cut from a beam.
Regarding claim 2:
Takeuchi discloses wherein the beam is a structural steel component (para. 0002) with a standard structural shape comprising one of a W-shape, an S-shape, an HP shape and an M-shape (the specific shape is not mentioned, but the T-plate connectors may be made of any of these).
Regarding claims 3 and 15:
Takeuchi discloses wherein a grain of the first T-plate connector aligns with a grain of the second T-plate connector when installed in the moment frame (refer to Fig. 1).
Regarding claim 4:
Takeuchi discloses wherein the first horizontal plate (6) extends orthogonally from the first vertical plate (5, refer to Fig. 8).
Regarding claim 5:
Takeuchi discloses wherein the second horizontal plate extends orthogonally from the second vertical plate (the first and second connectors are identical, refer to Fig. 1).
Regarding claims 6 and 7:
Takeuchi discloses wherein the first horizontal plate extends from a mid-section of the first vertical plate to divide the first vertical plate into two sections of equal size (refer to Fig. 8); wherein the second horizontal plate extends from a mid-section of the second vertical plate to divide the second vertical plate into two sections of equal size.
Regarding claim 8:
Takeuchi discloses wherein the first and second horizontal plates have the same size and shape.
Regarding claims 9-11:
Takeuchi discloses wherein the first and second horizontal plates have a rectangular shape (refer to Fig. 15a); wherein the first and second horizontal plates have a trapezoidal shape (refer to Fig. 8); and wherein the first and second horizontal plates each have tapered edges (Fig. 8).
Regarding claim 13:
Takeuchi discloses wherein the first vertical plate incudes a first pattern of bolt holes, and the second vertical plate includes a second pattern of bolt holes, the first and second patterns of bolt holes being identical to each other (refer to Fig. 8).
Regarding claim 14:
Takeuchi discloses wherein the first horizontal plate incudes a third pattern of bolt holes (62), and the second horizontal plate includes a fourth pattern of bolt holes, the third and fourth patterns of bolt holes being identical to each other.
Claims 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ditchfield, US 2,201,826.
Regarding claims 20 and 21:
Ditchfield discloses a section of an I-beam (each connector may be part of a section of an I-beam prior to having been made into a connector) comprising:
a first T-plate connector (19) comprising;
a first vertical plate (21) formed of the first flange of the blank, and a first horizontal plate (20) extending from and integrally formed with the vertical plate, the first horizontal plate formed from a first section of the web of the blank; and
a second T-plate connector comprising;
a second vertical plate formed of the second flange of the blank, and a second horizontal plate extending from and integrally formed with the second vertical plate, the second horizontal plate formed from a second section of the web of the blank;
wherein the first and second horizontal plates have the same size and shape (refer to Figs. 2, 4 and 5).
Response to Arguments
Applicant's arguments filed 3/9/26 have been fully considered but they are not persuasive.
As explained in the 112(b) rejection set forth above, the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In the instant case, Applicant has amended the preamble of each of the claims to recite “a section of a beam”. But the body of the claims describe structures formed from the section of a beam. This is tantamount to claiming “a gold ore deposit”… “the ore deposit comprising gold jewelry”. A claim claiming the raw material in the preamble and the finished product in the body of the claim in this form is indefinite. If claiming, for example, “a first T-plate connector formed from a section of a beam”, the claim would be definite but it would be a product-by-process recitation.
Conclusion
THIS ACTION IS MADE FINAL. 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 BRENT W HERRING whose telephone number is (571)270-3661. The examiner can normally be reached Monday-Thursday 7:30a-6:00p MT.
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/BRENT W HERRING/Primary Examiner, Art Unit 3633