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 .
Status of Claims
Claims 1-27 are pending. Claims 1-19 are subject to examination in this Office action. Claims 20-27 are withdrawn (non-elected).
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.
Claim 19 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 19, the term “the at least one reinforcing rod” lacks proper antecedent basis. In this regard, is the recited at least one reinforcing rod intended to refer back to the previously recited reinforcement rod, or is it additional structure? Clarification is requested.
Regarding claim 19, the term “the at least one reinforcement rod” (recited twice) lacks proper antecedent basis. In this regard, please note that claim 1 does not recite at least one reinforcement rod.
Claim Rejections - 35 USC § 102
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 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.
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 1-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by JP 2006 207364 A (cited by Applicant).
Regarding independent claim 1, JP '364 describes a thermally insulating structural element (1; paragraph [0001]-paragraph [0026]; Figures 1-8) for installation between two cast building portions (15, 16), the thermally insulating structural element (1) comprising:
at least one insulation member (2) which is adapted to be arranged between the two cast building portions;
at least one reinforcement element (4 or 5) comprising an at least partially rust-resistant reinforcement rod (see paragraph [0005]-paragraph [0008]) which in an installed state extends in an extent direction substantially transversely to a longitudinal extent of the insulation member through the insulation member and is constructed to be bonded in both building portions (see paragraph [0005]-paragraph [0008]; Figs. 1-8); and
the reinforcement rod is arranged to be adjustable substantially in the extent direction within the structural element (see paragraph [0014]).
Regarding claim 2, further comprising at least one pressure-force-transmitting element arranged to extend through the insulation member, the at least one pressure-force-transmitting element has end faces which serve to introduce pressure force and which protrude over the insulation member in the extent direction (see e.g., Figures 1-8).
Regarding claim 3, wherein the reinforcement rod is adjustable in increments or in a stepless manner (see e.g., Figures 1-8). Regarding the limitation directed to “after manufacture of the structural element and before bonding of the reinforcement rod in the two cast building portions”, 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. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 4, wherein the reinforcement rod at least partially has a profiling, comprising at least one of an outer thread, locking elements or thickened portions (see e.g., Figures 1-8).
Regarding claim 5, further comprising at least one adjustment device for adjusting the at least one reinforcement rod, and the adjustment device comprises one or more components (see e.g., Figures 1-8).
Regarding claim 6, wherein at least one of the one or more components of the adjustment device surrounds the reinforcement rod in parts at least partially (see e.g., Figures 1-8).
Regarding claim 7, wherein at least one of the one or more components of the adjustment device is connectable to the reinforcement rod, by at least one of clip-fitting, locking, insertion, adhesive-bonding, pressing, or welding (see e.g., Figures 1-8).
Regarding claim 8, wherein the reinforcement rod at least partially has a profiling comprising at least one of an outer thread, locking elements or thickened portions, the adjustment device has a counter-profile which is constructed to cooperate with the profiling of the reinforcement rod for adjustment, and the counter-profile is formed by at least one of a portion of an inner thread, at least one clamp, or at least one additional locking element (see e.g., Figures 1-8).
Regarding claim 9, wherein the counter-profile is constructed in a material of the insulation member (see e.g., Figures 1-8).
Regarding claim 10, wherein the reinforcement rod has an adjustment range from 0.5 cm to 50 cm (see e.g., Figures 1-8).
Regarding claim 11, further comprising at least one adjustment device for adjusting the at least one reinforcement rod, the adjustment device comprises one or more components, and one of the one or more components comprises at least one limitation means that sets the adjustment range (see e.g., Figures 1-8).
Regarding claim 12, wherein at least one of a) the limitation means is arranged outside or inside the insulation member, or a plurality of the limitation means are arranged in the extent direction along the reinforcement rod (see e.g., Figures 1-8).
Regarding claim 13, wherein at least one of a) the limitation means has at least one stop and a stop face or a stop location, or b) the limitation means is an end sleeve in which the reinforcement rod is introduced (see e.g., Figures 1-8).
Regarding claim 14, wherein the adjustment device is formed at least partially from plastics material (see e.g., Figures 1-8).
Regarding claim 15, wherein the adjustment device a) has at least one of a guide in which at least one of the one or more components of the adjustment device is movably arranged, or b) includes as the one or more components a rod guide as a guide in which the reinforcement rod is guided (see e.g., Figures 1-8).
Regarding claim 16, wherein there are a plurality of the reinforcement rods, and at least a part of the plurality of the reinforcement rods of the structural element are adjustable (see e.g., Figures 1-8).
Regarding claim 17, wherein the reinforcement rod is formed from a fiber-reinforced material (see e.g., Figures 1-8).
Regarding claim 18, wherein the reinforcement rod has at least one desired breaking location, and the reinforcement rod is adapted to be adjusted in terms of a length thereof by separation at the desired breaking location (see e.g., Figures 1-8).
Regarding claim 19, further comprising the at least one reinforcing rod has ends, and at least one anchoring element arranged on the at least one reinforcement rod, at one of the ends thereof, for anchoring the at least one reinforcement rod in the building portion or an auxiliary construction in order to produce the building portion during a construction phase (see e.g., Figures 1-8).
Response to Arguments
Applicant’s arguments submitted on 29 June 2026 have been fully considered, but they are not persuasive of error for at least the following reasons.
Regarding claim 1, Applicant asserts that the claim language “is arranged to be adjustable substantially in the extent direction within the structural element” requires both selecting a rod position during manufacture and a reinforcement rod that remains arranged in the structural element to permit adjustment in the extent direction. This assertion is misdirected, as it is not commensurate in scope with claim 1. Claim 1, as presently drafted, merely requires a reinforcement rod that is capable of being adjusted substantially in the extent direction within the structural element.
“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). In this regard, with respect to functional limitations, “[a] patent applicant is free to recite features of an apparatus either structurally or functionally.” Id. at 1478 (citing In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”). “Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk.” Id.
In particular,
where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.
Swinehart, 439 F.2d at 213.
In the present case, the Examiner maintains that the cited prior art is capable of being adjusted substantially in the extent direction within the structural element as discussed in the rejection of claim 1 above. Indeed, it is Applicant’s burden to show that the prior art is not capable of performing the various functions recited in the pending claims. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Swinehart, 439 F.2d 210, 213 (CCPA 1971); In re Best, 562 F.2d 1252, 1258 (CCPA 1977). Furthermore, Applicant has not provided any persuasive, objective evidence (e.g., in the form of Affidavits or Declarations) in the record in satisfaction of that burden. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney arguments are not objective evidence).
Moreover, as noted above, the limitation directed to “after manufacture of the structural element and before bonding of the reinforcement rod in the two cast building portions” recited in claim 3 is a product-by-process limitation, and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself.
Finally, while acknowledging that JP '364 teaches a reinforcement rod that is coated with a rust prevention treatment, Applicant asserts that JP '364 does not describe a reinforcement rod that is at least partially rust-resistant as required by claim 1. This assertion is not commensurate in scope with claim 1, as claim 1 does not define any further structural characteristics of the rod that would exclude a reinforcement rod that is coated with a rust prevention treatment from satisfying the “at least partially rust-resistant” claim language.
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.
Authorization for Email Communication – In the event Applicant wishes to communicate with the Examiner via electronic mail, written authorization should be provided in Applicant’s next response. See MPEP § 502.03. The following is a sample authorization form which may be used by Applicant:
Recognizing that Internet communications are not secure, we hereby authorize the USPTO to communicate with any authorized representative concerning any subject matter of this application by electronic mail. We understand that a copy of these communications will be made of record in the application file.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY MINTZ whose telephone number is (571)270-7327. The examiner can normally be reached on M-Th 0730 - 1630 EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached on 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RODNEY MINTZ/Primary Examiner, Art Unit 3635
Prosecution Insights