DETAILED ACTION
This Office action is a reply to the amendment filed on 3/9/2026. Currently, claims 1-10 are pending. No claims have been withdrawn, cancelled or added.
Information Disclosure Statement
The IDS filed on 3/9/2026 is being considered.
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 1-10 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, “said first end” (line 6) is indefinite because the limitation lacks antecedent basis. Does applicant intend for the limitation to refer to the previously recited first broad end? This rejection can be overcome by reciting, “said first broad end”. See also “first ends” in claim 10.
Claim 1, “said second end” (line 7) is indefinite because the limitation lacks antecedent basis. Does applicant intend for the limitation to refer to the previously recited second narrow end? This rejection can be overcome by reciting, “said second narrow end”.
Claim 1, “the opening” (second-to-last line) is indefinite because the limitation lacks antecedent basis. Does applicant intend for the limitation to refer to the previously recited through-going opening? This rejection can be overcome by reciting, “the through-going opening”. See also claims 2 and 10.
Claim 10, “each shim” (second-to-last line) is indefinite because the limitation lacks antecedent basis. Does applicant intend for the limitation to refer to the previously recited “at least two shims” or different/additional shims? If applicant intends for the limitation to refer to the previously recited at least two shims, this rejection can be overcome by reciting, “each of the at least two shims”.
The remainder of claims set forth in this section are rejected by virtue of dependency upon a rejected base claim.
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.
Claim(s) 1-2 and 5-10 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Friezner et al. (US 11795756) (‘Friezner’).
Claim 1, Friezner provides a shim 26 for blocking up building elements, wherein said shim comprises a main part having a first surface (see annotated Fig. 2 of Friezner shown below in Examiner’s Notes), and a second surface (annotated Fig. 2), a first broad (annotated Fig. 2) and second narrow end (annotated Fig. 2) and first and second sides (annotated Fig. 2; under the broadest reasonable interpretation, see first side or first end, and second side or second end, as the elements are interchangeable respectively, as exceedingly broadly claimed), said shim comprises an elongated connecting element (one of elements 28; Fig. 2) at said first surface (annotated Fig. 2),
characterized in that said elongated connecting element having a first connecting end (first connecting end of 28 connected to main body of 26; Fig. 2) connected to said main part at said first end (annotated Fig. 2), and a second free end (second free end of 28; Fig. 2) arranged towards said second end (annotated Fig. 2) of said main part, and wherein said shim comprises a through-going opening (one of the openings between round-shaped elements of 28; note that the opening is considered a through-going opening because the opening is a passage that goes completely through the round-shaped elements of 28 from one side to the other, as exceedingly broadly claimed; see annotated Fig. 6 of Friezner shown below in Examiner’s Notes) at said first surface (annotated Fig. 2), such that a second substantially identical shim 32 can be connected to said shim (Fig. 2) with said first surfaces towards each other (the first surface of 26 and the first surface of 32 toward each other as shown in Fig. 2), by the free ends of each elongated connecting element (free ends of 28 on 26 and free ends of 28 and 32) extending into and through the opening (opening in 26 and opening in 32) of the other shim (annotated Fig. 2; Fig. 1).
Claim 2, Friezner further provides wherein said elongated connecting element is connected to said main part at an edge of said opening (under the broadest reasonable interpretation, the location of such connection is at an edge of the opening defined between respective elements 28; annotated Fig. 2).
Claim 5, Friezner further provides wherein said first and second sides are longitudinal sides defining a length of said shim (annotated Fig. 2), said elongated connecting element having a length spanning the majority of the length of said shim (note that the elongated connecting element 28 extends along the majority of the length along the longitudinal length as shown in annotated Fig. 2).
Claim 6, Friezner further provides wherein said first and second surfaces are arranged at an angle in relation to each other, hereby forming a wedge (annotated Figs. 1-2).
Claim 7, Friezner further provides wherein said elongated connecting element is integrated with said main part (annotated Fig. 2).
Claim 8, Friezner further provides wherein said elongated connection element is arranged at an oblique angle in relation to said first surface (annotated Fig. 2).
Claim 9, Friezner teaches a shim system comprising two shims according to claim 1 (see rejection of claim 1 as above; annotated Fig. 2; Fig. 1).
Claim 10, Friezner provides a method of for blocking up building elements comprising:
providing at least two shims (26, 32) according to claim 1 (see rejection of claim 1 as above; Figs. 1-2),
arranging said two shims with said first surfaces and said first ends toward each other (annotated Fig. 2), engaging said shims by moving said shims towards each other (Figs. 1 and 2), such that the elongated connecting element of each shim projects into the opening of the other shim (Figs. 1-2).
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) 3-4 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Friezner et al. (US 11795756) (‘Friezner’).
Claim 3, Friezner further provides wherein said elongated connecting element is flexible, such that said elongated connecting element may be forced out of a neutral start position and bias back into said neutral start position (note that the limitation recites “may” which renders the claim optional and thus not required; further note that “flexible” is a relative term of degree, and that although the shim is made of a durable metal construction, under the basic properties of materials, the metal material would be expected to exhibit at least some amount of plasticity to be capable of being forced out of a neutral position, no matter how minute, and return to a start position, as exceedingly broadly claimed). In the event that applicant intends to positively recite the claimed flexibility and disagrees that Friezner’s material is flexible such as to be capable of being forced out of a neutral start position and bias back into said neutral start position, it would have been obvious to one of ordinary skill in the art, before the effective filing date to try using a more flexible material, such that said elongated connecting element may be forced out of a neutral start position and bias back into said neutral start position, with the reasonable expectation of success of allowing the shim to conform more easily to various surfaces to make it easier to slide the respective shims with respect to each other, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 4, Friezner further provides wherein said elongated connecting element comprises a weakening (under the basic properties of materials, the reduced thickness of portion 28 constitutes a weakening, since such reduced thickness is weaker than the increased thickness portion of 28, as exceedingly broadly claimed; Fig. 2) at said connecting end (note that the reduced thickness is nonetheless positioned at the connecting end as shown in Fig. 2), said weakening acting as a hinge, such that said elongated connecting element may be forced out of a neutral start position and bias back into said neutral start position (note that “may” is recited which renders optional the limitations that follow and thus the limitations that follow are not required; under the broadest reasonable interpretation, the reduced thickness of 28 is suitable to act as a hinge such that said elongated connecting element may be forced out of a neutral start position and bias back into said neutral start position, as the hinge is not required to bend, twist, rotate or turn and the reduced thickness facilitates the sliding the elongated connecting element out of position; col. 3, lines 64-67 and col. 4, lines 1-21; further note that although the shim is made of a durable metal construction, under the basic properties of materials, the metal material would be expected to exhibit at least some amount of plasticity to be capable of being forced out of a neutral position, no matter how minute, and return to the neutral position, as exceedingly broadly claimed). In the event that applicant intends to positively recite the claimed forcing out of a neutral start position and bias back into said neutral start position, and disagrees that Friezner’s material is capable of such action, it would have been obvious to one of ordinary skill in the art, before the effective filing date to try using a more flexible material that acts as a hinge, such that said elongated connecting element may be forced out of a neutral start position and bias back into said neutral start position, with the reasonable expectation of success of allowing the shim to conform more easily to various surfaces to make it easier to slide the respective shims with respect to each other, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Examiner’s Notes
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451
891
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Annotated Fig. 2 of Friezner et al. (US 11795756) (‘Friezner’)
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232
470
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Annotated Fig. 2 of Friezner et al. (US 11795756) (‘Friezner’)
Response to Arguments
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
Rejection of claim(s) 1-2 and 5-10 under 35 U.S.C. 102a1 as being anticipated by Friezner et al. (US 11795756) (‘Friezner’).
Re claim 1, applicant’s arguments hinge on the claims requiring respective elongated connecting elements extending through respective shims. However, the claims merely require a “through-going opening at said first surface”, and do not require the respective elongated connecting elements to extend completely through the respective shims. As such, Friezner’s through-going opening in the respective shims, defined by one of the openings between round-shaped elements of 28 reads on the limitation, as exceedingly broadly claimed. Thus, Friezner meets the claim.
Claims 2 and 5-10 stand or fall with claim 1 as above.
Rejection of claim(s) 3-4 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Friezner et al. (US 11795756) (‘Friezner’).
Claims 3-4 stand or fall with claim 1 as above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635