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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
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 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,162,234 in view of CN 202990497 U (hereinafter will be referred to as “CN ‘497”) and Wallace et al., US 2012/0003039 A1.
Regarding claim 1 of the instant application, claim 15 of the patent includes the limitations of a beam (first beam section) having a web and opposing flanges extending perpendicular to the web (which is an I-beam); a first plate and a first hole penetrating the first plate (a first connector plate having a first aperture). While the patent fails to disclose that the beam is steel, CN ‘497 discloses a steel I-beam. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the beam made of steel since it has been held that selection of a known material based on its suitability for its intended use is a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). While the resulting combination fails to disclose that the plate extends beyond a left end of the beam, the first hole is beyond the left end of the beam, a second plate extending beyond a right end of the beam, and a second hole penetrating the second plate beyond the right end, as shown in Figures 2 and 9 of CN ‘497, it is known to have plates with holes that extend beyond the ends of a beam to connect to adjacent beams, and Wallace teaches a roadway barrier and discloses a beam for connecting between posts and discloses connections on both the left end and right end, which makes obvious the second plate extending beyond a right end of the beam.
This resulting combination, with the first plate on a left end and the second plate on the right end, yields the limitation in claim 5 of the instant application, since the left end and the right end are on opposite side of the web.
Claims 10 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 16 of U.S. Patent No. 11,162,234 in view of CN 202990497 U (hereinafter will be referred to as “CN ‘497”) and Wallace et al., US 2012/0003039 A1.
The analysis of a steel beam having opposing flanges extending perpendicular to a web, a first top plate extending beyond a left end of the beam, a first top hole penetrating a first top plate, a second top plate extending beyond a right end of the beam, and a second top hole penetrating the second top plate beyond the right end is the same as detailed above for claim 1. Claim 16 of the patent include the first connector plate comprising a pair of vertically separated plates, having apertures aligned from claim 10 of the patent since a pin has to be disposed through the aligned holes for a pivotal connection; this covers the first bottom plate with associated hole and details as claimed in claims 10 and 16, and additionally the second bottom plate with associated hole and details as claimed in claim 16.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 202990497 U (hereinafter will be referred to as “CN ‘497”).
Regarding claim 1, CN ‘497 teaches a beam capable of being used for connecting between posts in a vehicle barrier, the beam comprising:
a steel beam (3; “modular beam is made of structural steel”; [0004] and [0018]) having a web and opposing flanges extending perpendicular to the web (web and flanges clearly shown in Figure 9);
a first plate (shown in Figures 1 and 2) extending beyond a left end of the beam;
a first hole penetrating the first plate beyond the left end (unnumbered, shown in Figure 2);
a second plate extending beyond a right end of the beam (beam 3 is shown with a plate at the right end in Figure 1);
a second hole penetrating the second plate beyond the right end (unnumbered, shown in Figure 1).
Regarding claim 2, as shown in Figures 1 and 2, the first plate and the second plate are horizontal with the web (they all have a longitudinal horizontal component).
Regarding claim 3, as shown in Figure 2, the first plate comprises a beam portion (right half of the first plate) overlapping the web and an extension portion (left half of the first plate) extending beyond the left end of the beam.
Regarding claim 4, as shown in Figure 2, the first hole and second hole are perpendicular to the web (looking at Figure 2, each hole runs along the direction that is into/out of the page, the web is along the direction of up and down the page).
Regarding claim 5, the first plate and the second plate are located on opposite sides of the web (left side and right side).
Regarding claim 6, as shown in Figure 1, the first plate and the second plate are located on a same side of the web (the side of the web facing the viewer looking at Figure 1).
Regarding claim 7, the first plate and the second plate are horizontal with the web (they all have a longitudinal horizontal component); the first hole and second hole are perpendicular to the web (looking at Figure 2, each hole runs along the direction that is into/out of the page, the web is along the direction of up and down the page); the first plate comprises a beam portion (right half of the first plate) overlapping the web and an extension portion (left half of the first plate) extending beyond the left end of the beam; and the second plate comprises a beam portion (left half of the second plate) overlapping the web and an extension portion (right half of the second plate) located beyond the right end.
Regarding claim 8, as shown in Figure 1, the first plate and the second plate are located on opposite sides of the web (left side and right side).
Regarding claim 9, as shown in Figure 1, the first plate and the second plate are located on a same side of the web (the side of the web facing the viewer looking at Figure 1).
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 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-0515387 (hereinafter will be referred to as “KR ‘387”) in view of CN 202990497 U (hereinafter will be referred to as “CN ‘497”) and Swahlan et al., US 8,210,767 B1.
Regarding claim 10, KR ‘387 teaches a beam capable of being used for connecting between posts in a vehicle barrier, the beam comprising:
a beam having opposing flanges extending perpendicular to a web (the H-beam shown in Figure 3);
a first plate (217 in Figure 3) extending beyond a left end of the beam;
a first other plate (other 217 in Figure 3) extending beyond the left end parallel to the first plate;
a first hole (shown in Figure 3) penetrating the top plate; and
a first other hole (shown in Figure 3) penetrating the first other plate coaxial with the first hole.
While KR ‘387 fails to disclose that the beam is a steel beam or that the beam comprises a second plate, CN ‘497 teaches a similar H-beam and discloses that it is a steel beam (3; “modular beam is made of structural steel”; [0004] and [0018]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify KR ‘387’s beam to be a steel beam in view of CN ‘497’s disclosure since it has been held that selection of a known material based on its suitability for its intended use is a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). CN ‘497 further discloses connecting to adjacent beams using plates having holes extending beyond the beam on both left and right sides (Figures 1 and 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the beam of the resulting combination to have a second plate beyond a right end of the beam, the second plate having a second hole penetrating the second plate beyond the right end if it was desired to connect to an adjacent beam on the right side.
While the resulting combination fails to disclose the plates as top or bottom plates with top or bottom holes, Swahlan teaches a vehicle barrier and discloses a different orientation for an H-beam (102, Figures 1 and 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the orientation (rotated along a horizontal axis) of the beam of the resulting combination in view of Swahlan’s disclosure based on the type of vehicle barrier desired. The resulting combination yields a first top plate, a first bottom plate, a first top hole, a first bottom hole, a second top plate, and a second top hole and with the associated limitations.
Regarding claim 11, the resulting combination includes the first top hole and the second top hole being perpendicular to the web (looking at Swahlan’s Figure 2, the first and second top holes would run approximately from the northeast corner of the page to the southwest corner of the page, while the web is along the northwest to southeast).
Regarding claim 12, the resulting combination includes the first top plate and first bottom plate are located on opposite sides of the web (top and bottom sides).
Regarding claim 13, the resulting combination includes the first top plate, the first bottom plate, and the second top plate being parallel to the web.
Regarding claim 14, the resulting combination includes the first top plate and the first bottom plate each comprising a beam portion (right sides of plates) overlapping the web and an extension portion (left sides of plates) extending beyond the left end of the beam.
Regarding claim 15, the resulting combination includes the first top plate and the first bottom plate being located on opposite sides of the web (top and bottom sides); and the first top plate, the first bottom plate, and the second top plate being parallel to the web.
Regarding claim 16, KR ‘387 teaches a beam capable of being used for connecting between posts in a vehicle barrier, the beam comprising:
a beam having opposing flanges extending perpendicular to a web (the H-beam shown in Figure 3);
a first plate (217 in Figure 3) extending beyond a left end of the beam;
a first other plate (other 217 in Figure 3) extending beyond the left end parallel to the first plate;
a first hole (shown in Figure 3) penetrating the top plate; and
a first other hole (shown in Figure 3) penetrating the first other plate coaxial with the first hole.
While KR ‘387 fails to disclose that the beam is a steel beam or that the beam comprises any second plates, CN ‘497 teaches a similar H-beam and discloses that it is a steel beam (3; “modular beam is made of structural steel”; [0004] and [0018]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify KR ‘387’s beam to be a steel beam in view of CN ‘497’s disclosure since it has been held that selection of a known material based on its suitability for its intended use is a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). CN ‘497 further discloses connecting to adjacent beams using plates having holes extending beyond the beam on both left and right sides (Figures 1 and 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the beam of the resulting combination to have two second plates beyond a right end of the beam, the second plates having second holes penetrating the second plates beyond the right end if it was desired to connect to an adjacent beam on the right side.
While the resulting combination fails to disclose the plates as top or bottom plates with top or bottom holes, Swahlan teaches a vehicle barrier and discloses a different orientation for an H-beam (102, Figures 1 and 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the orientation (rotated along a horizontal axis) of the beam of the resulting combination in view of Swahlan’s disclosure based on the type of vehicle barrier desired. The resulting combination yields a first top plate, a first bottom plate, a first top hole, a first bottom hole, a second top plate, a second top hole, a second bottom plate, and a second bottom hole and with the associated limitations.
Regarding claim 17, the resulting combination includes the first top hole and the second top hole being perpendicular to the web (looking at Swahlan’s Figure 2, the first and second top holes would run approximately from the northeast corner of the page to the southwest corner of the page, while the web is along the northwest to southeast).
Regarding claim 18, the resulting combination includes the first top plate and first bottom plate being located on opposite sides of the web (top and bottom sides) and the second top plate and the second bottom plate being located on opposite sides of the web (top and bottom sides).
Regarding claim 19, the resulting combination includes each of the first top plate and the first bottom plate comprising a beam portion (the right sides of the plates) overlapping the web and an extension portion (the left sides of the plates) extending beyond the left end; and each of the second top plate and the second bottom plate comprising a beam portion (left sides of the second plates) overlapping the web and an extension portion (right sides of the second plates) extending beyond the right end.
Regarding claim 20, the resulting combination includes the first top plate and the first bottom plate being located on opposite sides of the web (top and bottom sides); and the second top plate and the second bottom plate are located on opposite sides of the web (top and bottom sides). While looking at KR ‘387’s plates 217 and the size of the web in Figure 3, it would appear that the beam portion of the plates could contact with the opposing flanges, but it is not explicitly disclosed, this appears to be a matter of change in size, and it has been held that change in size does not patentably distinguish over the prior art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to size the plates so that they have the same dimension as the depth of the web to simplify sizing each element. The resulting combination yields the beam portion of the plates being in contact with the opposing flanges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
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