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 .
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 34-44 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.
In regard to claim 34, the claim is indefinite because it appears to be claiming both an apparatus and the method steps of using the apparatus (see MPEP 2173.05(p)). It is unclear if the claim is directed to the final product after assembly, or to the initial units before assembly, or if applicant is attempting to claim a product-by-process claim. For examining purposes, the claim is treated as a product-by-process 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.
Claims 34-37, 39, 44-48, 50 and 54 are rejected under 35 U.S.C. 102(a) as being anticipated by Barry US 2011/0179721 A1 (hereinafter ‘Barry’).
In regard to claims 34 and 45, Barry teaches a hybrid residential building system (multi-unit housing structure -see Abstract) comprising:
a first building section (housing unit) configured to be constructed on-site at a final location for a building and to define an internal volume that provides a living space (108) within the building (see [0051]), the internal volume being formed entirely at the final location (see fig. 5, step 500); and
a second building section (see shaded sections in fig. 1A) comprising a plurality of modular building units (102, 104), each constructed to a substantially assembled form at a location away from the final location, the modular building units forming the second building section each defining an internal volume and being transportable to the final location in their substantially assembled form (see “via shipping” [0084]);
in which the first and second building sections are adapted to be connected at the final location to form the building (the units of Barry are fully capable of being connected per [0082]);
and in which the modular building units are configured to be located spaced apart and arranged (see fig. 1A) so that a first one (102) of the modular building units services at least a further modular building unit (bathroom 104 see [0053]) with one or more service selected from the group comprising water, sewerage, gas, heating, electricity, telecommunications and ventilation (see [0063] “all service connections for a housing unit may be made through a building module 102”).
It is noted that, as best understood, the claim contains product-by-process limitations. Patentability of a product is based on the product itself and not on its method of production. The product-by-process limitations such as “formed entirely at the final location” and “constructed to a substantially assembled form at a location away from the final location” are not expected to impart distinctive structural characteristics to the final product. Barry’s final product teaches a formed internal volume and the units constructed to a “substantially assembled form” thus the claim is met (see MPEP 2113).
With respect to the method steps, see fig. 5. Note that as noted above, the sections of Barry are constructed, transported and arranged as claimed.
In regard to claims 35, 36, 46 and 47, Barry teaches the claimed invention in which the modular units are arranged out of contact with one another and at a common level (see fig. 1A showing plan view of one level).
In regard to claims 37 and 48, Barry teaches the claimed invention in which the modular building units are sacked and arranged so that they are aligned (see “positioned vertically” [0063]).
In regard to claims 39 and 50, Barry teaches the claimed invention in which the modular building units are arranged so that the services pass from the first modular building unit through the first building section to the at least one further modular building unit.
Note that per claims 34 and 45 above, the unit 102 services unit 104, and when they are connected via 306 (see [0077]), such connection passes through the first building section as seen in figs. 1A and 3B.
In regard to claims 43 and 54, Barry teaches the claimed invention in which the first building section is arranged defining an outer perimeter of the building (see fig. 1A), and the modular building units are positioned within the outer perimeter defined by the first building section (fig. 1A).
In regard to claim 44, Barry teaches the claimed invention in which the modular building units forming the second building section are configured to be transported to the site (see [0084]) and the first building section is configured to (capable) be constructed around the second building section and connected to it (see fig. 1A -the first building section is located around the modules of the second building section).
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 38, 40-42, 49, 51-53 are rejected under 35 U.S.C. 103 as being unpatentable over Barry.
In regard to claims 38 and 49, Barry does not explicitly teach the modular building units are sacked and arranged so that they partially overlap.
Barry, however, teaches the units can be “positioned vertically over another unit” (see [0063]) and that the modules can be installed “in a custom matter, responsive to desires of the architect, building owner or housing unit owner” and “in many different configurations” (see [0088]). Thus, it would have been obvious, to one of ordinary skill in the art, before the effective filling date of the instant application, to arrange the stacked units so that they partially overlap so as to provide different configurations of units based on owner preferences.
In regard to claims 40 and 51, Barry does not explicitly teach constructing a further building section at a location away from the final location, transported to the final location and arranged spaced from and out of touch with one or both of the first and second building sections, and provided with services by the second building section.
Barry does teach, however, that a plurality of prefabricated building modules can be used to define the living space, and that in addition to modules 102, and 104, the remaining space may also include a further module to define a further living space (see [0082]). It would have been obvious that such further prefabricated module is shipped to the final location in the same manner that the first and second modules are (see [0084]). Further, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to arrange the further building section spaced from and out of contact from at least one other one as a matter of design choice, so as to provide different configurations of units based on owner preferences.
In regard to claims 41, 42, 52 and 53, Barry teaches the claimed invention wherein the first modular building comprises a services hub. Note that the first modular building unit is the services hub per [0063].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide a plant room forming the services hub of Barry so as to enable the delivery of the utilities and their connections to the outlets as disclosed in [0063]).
Claim 55 is rejected under 35 U.S.C. 103 as being unpatentable over Barry in view of Russell et al. US 2013/0014451 A1 (hereinafter ‘Russell’).
In regard to claim 55, Barry teaches the modular building units forming the second building section are transported to the site (see [0084]).
Barry does not explicitly teach constructing the first building section around the second building section after positioning the modular building units at the final location.
Russell teaches a method of constructing a building in which a modular building unit is placed at the final location, and then another building section is constructed around it (see fig. 6 and [0044]).
It would have been obvious, to one of ordinary skill in the art, before the effective filling date of the instant application, to construct the first building section of Barry around the modular building units of the second building section, as taught by Russell, so as to facilitate an expedited construction process which is beneficial particularly in cases of emergency (see Russell [0046]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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/PAOLA AGUDELO/ Primary Examiner, Art Unit 3633
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