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
Applicant’s election without traverse of Group I in the reply filed on 12/30/25 is acknowledged.
Claims 12-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/25/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 9 is objected to because of the following informalities: the claim states “and outside diameter of the wire” instead of “an outside diameter of the wire”. 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 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.
Claim 1 recites “wherein the wire has a carbon content in the range of 0.04% to 0.20%”. It is unclear if this is a weight percentage or something else. For purposes of examination, it has been assumed to be a weight percentage.
Claim 7 recites “wherein side wire”. It is unclear if “side wire” is referring to a previously introduced structure or if it is a new structure being introduced. The structure has no context and lacks an article identifier (e.g. “a” or “the”).
Claim 9 recites “outside diameter of said wire”. It is unclear what an “outside diameter” encompasses. Is it just the diameter of the wire?
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Galluccio, US 2005/0257482 in view of Workman et al., US 2020/0283864.
Regarding claim 1:
Galluccio discloses a reinforcing member (Figs. 3, 4 and 10) for a concrete structure, said reinforcing member comprising:
an elongate drawn wire formed into a four-sided tubular helical member (refer to Fig. 3);
said helical member having a number (a-d) of 360o turns;
each turn having a first width w1 and a second width w2 (the shape is squared, para. 0024);
each turn as viewed in a direction along a main central length axis of said helical member comprising four lengths substantially in the form of a rectangle or a square;
wherein each single 360° turn of the helical member comprises a first upper member, a first side member, a lower member, and a second side member, wherein the first upper member is connected to the first side member by a first corner portion, the first side member is connected to the lower member by a second corner portion, the lower member is connected to the second side member by a third corner portion, and the second side member is connected to the second upper member by fourth corner portion (refer to Figs. 3 and 5);
said helical member capable of adopting a first compacted state in which said plurality of turns are compacted along a main length axis of said helical member to a first overall length (Fig. 4); and
said helical member being capable of adopting an expanded state in which said helical member expands in a direction along said main length axis of said member to a second length (Fig. 3);
said helical member having a resilient shape memory (para. 0061) which causes the helical member to adopt a contracted, as manufactured state when said member is not under tension such that each turn lies in contact with an adjacent turn (as shown in Fig. 4);
wherein in an expanded in-use condition, the plurality of turns of the helical member are space out substantially equidistantly between adjacent turns with a substantially constant pitch p (via loosening, elasticity and shape memory, para. 0061 and as shown in Fig. 5).
Galluccio shows the plurality of turns spaced out equidistantly but does not mention that the equidistance is achieved automatically. 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 re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. A comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 USPQ 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F.2d 905, 142 USPQ 161 (CCPA 1964). In an ex parte case, product by process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F.2d 67, 190 USPQ 15, see footnote 3 (CCPA 1976).
Galluccio does not expressly disclose wherein the wire has a carbon content in the range of 0.04% to 0.20%.
Workman discloses a reinforcing member for a concrete structure having a carbon content in the range of 0.08%-0.23% (para. 0007).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to substitute the material composition of the reinforcing member of Workman for that of Galluccio in order to make the wire of Galluccio weldable (para. 0006).
In the case where the claimed range “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 2:
Galluccio discloses wherein the ratio of width is 1.0 (square).
Regarding claims 3-5 and 9-11:
Galluccio discloses a fully compacted state (Fig. 4) and an expanded state with a pitch of 20cm (para. 0052) and suggests wherein the pitch may be varied (para. 0014) based on size and other factors.
Galluccio does not expressly disclose the pitch ratio between compacted and expanded nor a pitch range between 4cm and 15cm or 5cm and 10cm, nor the radius of curvature of inner most periphery of at least one of the corners of the wire internal to the tunnel-shaped coil.
It would have been an obvious matter of design choice to vary the pitch of the reinforcing member of Galluccio and the claimed radius of curvature, 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 carrying the pitch of Galluccio, as Galluccio acknowledges changes in dimensional stability and strength. There is no evidence that the claimed dimensions not specifically taught by Galluccio provide a criticality that would be unachievable and unexpected with a reasonable amount of experimentation.
Regarding claim 6:
Galluccio discloses uniformity of pitch (“the pitch of the stirrup should be constant”, para. 0014).
Regarding claim 7:
Galluccio discloses wherein a side wire of the reinforcing member is smooth (refer to Figs. 2 and 10).
Regarding claim 8:
Galluccio discloses wherein, in a newly manufactured form, a pitch between adjacent successive turns of the member is in the range of 0 to 3 the outside diameter of the wire (refer to Fig. 4, member is fully collapsed, indicating a range falling within 0 to 3).
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.
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/BRENT W HERRING/Primary Examiner, Art Unit 3633