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
Claims 24-30 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/07/2026.
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.
Claim 2, 31, 35 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.
Regarding claims 2 and 31, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). appropriate correction is required.
Regarding claims 2 and 31, it is unclear what is meant by “subject to the surface elements…” and it is unclear if the limitation is required of the claim. The examiner will examine as best understood with the limitation a conditional limitation and not required of the apparatus. Appropriate correction is required.
Regarding claim 35, antecedent basis for the components has previously been established in the preceding claims. Appropriate correction is required.
Claims 36-37 rejected under 35 USC 112 as being dependent on a rejected claim.
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 (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.
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) 1-11, 13-16, 31, 33-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bishop, U.S. Patent 10,202,773.
Regarding claim 1, Bishop discloses a wall covering comprising: a supporting layer (16); a plurality of surface elements (26) connected to the supporting layer; and a filler (34) provided between adjacent surface elements and connected to the supporting layer.
Regarding claim 2, Bishop discloses a wall covering wherein the surface elements and the filler are made from the same material (polymeric binding agent 30; col. 8, lines 37-38, 45-47), subject to the surface elements and/or the filler optionally comprising different colouring additives.
Regarding claim 3, Bishop discloses a wall covering wherein the surface elements and/or the filler is made from a flexible polymer material (polymeric binding agent 30; col. 8, lines 37-38, 45-47).
Regarding claim 4, Bishop discloses a wall covering wherein the supporting layer is a flexible mesh (col. 8, lines 1-2).
Regarding claim 5, Bishop discloses a wall covering wherein the mesh is embedded within each of the surface elements (col. 9, lines 10-16).
Regarding claim 6, Bishop discloses a wall covering wherein the mesh is embedded within the filler (co. 10, lines 1-4, col. 6, lines 62-64).
Regarding claim 7, Bishop discloses a wall covering wherein the surface elements comprise a coating of surface finish powder (col. 10, line 62-col. 11, line 1).
Regarding claim 8, Bishop discloses a wall covering wherein the plurality of surface elements are formed with at least two different colours (col. 10, line 62-col. 11, line 1).
Regarding claim 9, Bishop discloses a wall covering wherein the prefabricated facade surface covering comprises a tessellating shape (see Figs. 6, 14), such that when a plurality of the prefabricated facade surface coverings are installed adjacent to one another, the surface elements from a first of the prefabricated facade surface coverings interlock with the surface elements from a second of the prefabricated facade surface coverings.
Regarding claim 10, Bishop discloses a wall covering wherein the filler is provided adjacent surface elements on an edge of the prefabricated facade surface covering, and omitted from surface elements on an opposing edge of the prefabricated facade surface covering, such that when the plurality of prefabricated facade surface coverings are installed adjacent to one another, filler is provided adjacent surface elements of adjacent prefabricated facade surface coverings (see Figs. 8-9, generally).
Regarding claim 11, Bishop discloses a wall covering wherein the prefabricated facade surface covering is flexible such that the prefabricated facade surface covering may be elastically deformed under handling or installation without cracking or permanent damage occurring (see Fig. 1). The phrase “may be elastically deformed under handling or installation without cracking or permanent damage occurring” is a statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 13, Bishop discloses a building comprising a prefabricated facade surface covering according to claim 1 (see Fig. 15).
Regarding claim 14, Bishop discloses a building wherein the prefabricated facade surface covering is attached to a surface of the building, a modular building unit or any component thereof using adhesive (col. 11, lines 58-61).
Regarding claim 15, Bishop discloses a building wherein the adhesive is formed from the same material as the filler (col. 11, lines 58-61).
Regarding claim 16, Bishop discloses a wall covering comprising: providing a supporting layer (16); providing a plurality of surface elements (26) connected to the supporting layer; and providing a filler (34) between adjacent surface elements and connected to the supporting layer.
Regarding claim 31, Bishop discloses a wall covering wherein the steps of providing the surface elements and the filler comprise providing surface elements and filler made from the same material (polymeric binding agent 30; col. 8, lines 37-38, 45-47), subject to the surface elements and/or the filler optionally comprising different colouring additives.
Regarding claim 33, Bishop discloses a wall covering wherein the supporting layer is a flexible mesh (col. 8, lines 1-2).
Regarding claim 34, Bishop discloses a wall covering wherein the prefabricated facade surface covering is flexible such that the prefabricated facade surface covering may be elastically deformed under handling or installation without cracking or permanent damage occurring (see Fig. 1).
Regarding claim 35, Bishop discloses a wall covering comprising providing one or more prefabricated facade surface coverings (10) according to claims 1 or preparing one or more prefabricated facade surface coverings according to a method comprising providing a supporting layer (16); providing a plurality of surface elements (26) connected to the supporting layer; and providing a filler (34) between adjacent surface elements and connected to the supporting layer, and connecting the prefabricated facade surface covering to the building or modular building unit or any component thereof (as shown in Fig. 15).
Regarding claim 36, Bishop discloses a wall covering wherein the step of connecting the one or more prefabricated facade surface coverings comprises using adhesive (col. 11, lines 58-61).
Regarding claim 37, Bishop discloses a wall covering wherein the adhesive is formed from the same material as the filler (col. 11, lines 58-61).
Claim Rejections - 35 USC § 103
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.
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) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bishop, U.S. Patent 10,202,773 in view of Mollinger et al., U.S. Patent Application Publication 2009/0056257.
Regarding claim 12, Bishop discloses a wall covering but does not specifically disclose wherein the supporting layer extends beyond the plurality of surface elements on a first side of the flexible prefabricated facade surface covering and does not extend beyond the plurality of surface elements on a second side of the flexible prefabricated facade surface covering that is on an opposite side of the flexible prefabricated facade surface covering from the first side. Mollinger teaches this configuration of surface elements on a backing (Fig. 2). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the wall covering such that the supporting layer extends beyond the plurality of surface elements on a first side of the flexible prefabricated facade surface covering and does not extend beyond the plurality of surface elements on a second side of the flexible prefabricated facade surface covering that is on an opposite side of the flexible prefabricated facade surface covering from the first side to reduce material cost, as the end result will be the same.
Claim(s) 17-23, 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bishop, U.S. Patent 10,202,773 (‘773) in view of Bishop, U.S. Patent 10,487,516 (‘516).
Regarding claim 17, Bishop (‘773) discloses a wall covering but does not specifically disclose wherein the step of providing the plurality of surface elements connected to the supporting layer comprises: providing a surface element stencil onto the supporting layer, the surface element stencil comprising openings defining the plurality of surface elements to be formed on the supporting layer; and providing a surface element material onto the supporting layer through the openings of the surface element stencil. Bishop (516) teaches providing a surface element stencil onto the supporting layer, the surface element stencil comprising openings defining the plurality of surface elements to be formed on the supporting layer; and providing a surface element material onto the supporting layer through the openings of the surface element stencil (col. 3, lines 51-54; col. 5, lines 27-33).
Regarding claim 18, the prior art, as modified, discloses a wall covering wherein the step of providing the surface element material onto the supporting layer through the openings of the surface element stencil comprises: providing an applicator arranged to supply the surface element material across a width of the surface element stencil; moving the supporting layer and the surface element stencil together relative to the applicator, while supplying the surface element material; and providing a blade adjacent to the applicator arranged to remove excess surface element material (Bishop (516) col. 3, lines 51-54; col. 5, lines 27-33).
Regarding claim 19, the prior art as modified discloses a wall covering further comprising: providing a colouring layer material onto one or more of the surface elements, the colouring layer material being made from the same material as the surface elements material but having a different colour from the surface element material (Bishop (516) col. 6 lines 22-28).
Regarding claim 20, Bishop (773) discloses a wall covering contacting the surface element material with a tool or object to impart a surface texture to the surface elements (col. 8, lines 32-36).
Regarding claim 21, Bishop (773) discloses a wall covering but does not disclose it is further comprising: distributing a surface finish powder across the surface element material, or colouring layer material where provided, of one or more of the surface elements. Bishop (516) teaches a surface finish powder across the surface element material, or colouring layer material where provided, of one or more of the surface elements (col. 6, lines 22-28). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply a finish powder/color across the surface elements for a desired aesthetic outcome.
Regarding claim 22, the prior art as modified discloses a wall covering further comprising pressing the surface finish powder into the surface element material, or colouring layer material where provided, to embed the surface finish powder into the surface element material or colouring layer material (col. 6, lines 22-28).
Regarding claim 23, Bishop (773) discloses a wall covering further comprising: before providing the filler between adjacent surface elements, hardening the surface element material, to form the plurality of surface elements connected to the supporting layer (col. 9, lines 60-63).
Regarding claim 32, Bishop (773) discloses a wall covering wherein the surface elements and/or the filler is made from a flexible polymer material (polymeric binding agent 30; col. 8, lines 37-38, 45-47).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GISELE D FORD whose telephone number is (571)270-7326. The examiner can normally be reached M-T,Th-F 7:30am-4:30pm.
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 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.
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.
GISELE D. FORD
Examiner
Art Unit 3633
/GISELE D FORD/Examiner, Art Unit 3633
Prosecution Insights