DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Claims 1-11 and 15 in the reply filed on 01/08/2026 is acknowledged.
Claims 12-14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/08/2026.
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 5 and 9, 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. The claim language specifies “preferably” as a modifier. Are the limitations following “preferably” being positively claimed or not. This lack of clarity renders the scope of the claim indefinite. An appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim 1 recites the limitation “attaching means”. Claim 4 recites the limitation “mechanical means. Claim 10 recites the limitations “fixing means” and “leveling means”.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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) 1-9 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Entreprise Villain (FR 124186) in view of Leconte (U.S. 6,640,507).
In re Claim 1 and 3, Entreprise teaches the prefab panel with a frame structure with a first and a second horizontal profiles (4,5,15,16). First and a second vertical profiles (2,3,12,13) connect the first and the second horizontal profiles at profile fixing points where they meet at corners. The first and second horizontal profiles and the first and second vertical profiles have a matching shiplap design, as is shown in Figures 3 and 4. Entreprise teaches brackets (6) attachable to the first and second vertical profiles so as to connect the frame structure to a floor slab (B) of the building, for supporting the prefab panel and façade loads. (Figures 1-3)
The limitations “to connect the frame structure to a floor slab of the building, for supporting the prefab panel and façade loads” and “to allow clamping fit of the outer cladding” functional language directed to the intended use of the product and is afforded only limited weight in the claim. The product is capable of performing the function.
Entreprise teaches that the panels held in frames formed by the framework (page 1, Column 1) but does not disclose that the panel outer cladding is made of plasterboard attached to the frame structure and attaching means for attaching the outer cladding to the frame structure.
Leconte teaches a panel attached to a building with a plasterboard cladding (30) that is mounted to a supporting frame (13,14,15,16) with an attaching means such as screws or fasteners (Column 3, Lines 43-49; Figure1-8)
It would be obvious to one ordinary skill in the art prior to the effective filing date of the invention to mount a plasterboard cladding panel taught by Leconte to the frame taught by Entreprise in for reasons of aesthetics and to provide a measure of acoustic insulation. In holding the frame together, the shiplap design of the profiles would allow the intended use for a clamping fit of the outer cladding.
In re Claim 2, Entreprise modified by Leconte has been previously discussed. Leconte also teaches connecting plate (8), interspersed between the brackets (6) and the floor slab (B). The limitation “for connecting the frame structure to the floor slab” is functional language directed to the intended use of the product and is afforded only limited weight in the claim. The product is capable of performing the function.
In re Claim 4, Entreprise modified by Leconte has been previously discussed but does not specifically teach how the horizontal and vertical profiles are fixed together at their fixing points to form the frame. However, the examiner takes official notice that the use of a mechanical means fasteners like screws or glue to join the horizontal and vertical profiles together to form a frame is well known in the art and the examiner takes official notice of it.
In re Claim 5-7, Entreprise modified by Leconte has been previously discussed. Entreprise teaches joint sealing elements (14) outwardly attached to at least one of the horizontal profiles and / or at least one of the vertical profiles, the joint sealing elements (14) preferably being self-adhesive, and comprising a peel-off protective sheet. While not specifically disclosed that this sealing element extends along the whole perimeter of the panel, this would be obvious to one of ordinary skill in the art prior to the effective filing date as this would assure a solid seal around the entire perimeter of the frame joint.
The limitations “for providing airtightness and watertightness” functional language directed to the intended use of the product and is afforded only limited weight in the claim. The product is capable of performing the function.
Entreprise does not teach the seal is a self-adhesive foam material with a peel off sheet. However, foam seals with peel off material are well known in the art and the examiner takes official notice that such seals are well known and conventional for The are effective seals at joints.
In re Claim 8, Entreprise modified by Leconte has been previously discussed. Entreprise. Leconte also teaches a thermal insulator(20) housed at a rear portion of the frame structure (13,14,15,16), opposite a front part thereof comprising the outer cladding (30). (Figure1-8)
In re Claim 9, Entreprise modified by Leconte has been previously discussed but does not teach a third vertical profile first and the second vertical profile. It would have been obvious to one having ordinary skill in the art to prior to the effective filing date of the invention to have a third vertical profile, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. This third profile would structurally reinforce the frame and panel.
In re Claim 15, Entreprise modified by Leconte has been previously discussed. Entreprise teaches a plurality of the prefab panels (1) coupled to each other and to a building structure (B) of a building. (Figures 1-3) In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, does not depend on its method of production. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Allowable Subject Matter
Claims 10 and 11 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art of record fails to teach or adequately suggest a prefab panel with the combination of characteristics specified in the independent claim. Of particular note are the requirement that the brackets of are metallic plates with a shorter second portion with a vertical slot, for allocating a curved upper part of the connecting plate, as well as fixing means, for fixing the connecting plate to the slot, and also levelling means, for levelling the connecting plate in height. There is no cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the time the invention was made to modify the prior art to obtain the applicant's invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM G BARLOW whose telephone number is (571)270-1158. The examiner can normally be reached Monday - Friday, 9:00 am-4:00 pm EST.
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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/ADAM G BARLOW/Examiner, Art Unit 3633
/BRIAN E GLESSNER/Supervisory Patent Examiner, Art Unit 3633
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