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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 34, 40-43, 45, 51-55 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, in claims 34 and 45, the recitation of “through a structure of the first building section that bounds the at least part of the living space disposed between the first modular building unit and the at least one further modular building unit.” does not appear to have support in the specification or in the drawings, the examiner doesn’t know what or where is said structure, and there is no mentioning or showing in the drawings of any structure of the first building that bounds part of the living space that is between the modular units.
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, 40-43, 45, 51-55 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 claims 34 and 45, the claim is indefinite because the recitation of “through a structure of the first building section that bounds the at least part of the living space disposed between the first modular building unit and the at least one further modular building unit.” is unclear. The examiner does not know what is the structure of the first building section or how it bounds the at least part of the living space. Is it enclosing some space in the first building section?.
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, 43, 45 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) constructed on-site at a final location for a building and defining an internal volume that provides a living space (the non-shaded sections in fig. 1A) 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;
wherein the first and second building sections are connected at the final location to form the building (see [0082] and fig. 1A);
wherein the modular building units are spaced apart at a common level within the building (shown in fig. 1A) so that they are not in contact with one another, with at least part of the living space provided by the first building section disposed between a first modular building unit and at least one further modular building unit (see fig. 1A showing the first (102) and further (104) modular building units) being arranged so that a first modular building unit 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”), the one or more services passing from the first modular building unit to the further one through a structure of the first building section (note that the building units are connected via structure 306 (see [0077] “utility hookups or connection between” the modules) which is part of the first building unit and, as best understood, bounds the at least part of the living space disposed between the units (see fig. 1A).
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 “constructed on-site 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 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 (see [0084]) and arranged as claimed.
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).
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 40, 41, 42, 51-53 are rejected under 35 U.S.C. 103 as being unpatentable over Barry.
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]).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the space 306 of Barry is not disclosed as providing the intervening living space separating the modular building units.
The Examiner maintains the rejection as noted above, note that space or structure 306 of Barry is part of the living space provided by the first building section and thus meets the claim. Although the recitation of such structure “bounding” the space is unclear, under broadest reasonable interpretation one can conclude that the walls of structure 306 “bound” a space in the first building unit which is the space enclosed by the structure. Again, the space and the structure are part of the first building structure thus providing for the living space. Note that the living space is all the space in the level shown in fig 1A, minus the modular units 102 and 104.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAOLA AGUDELO whose telephone number is (571)270-7986. The examiner can normally be reached 8AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian E 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.
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/PAOLA AGUDELO/ Primary Examiner, Art Unit 3633
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