DETAILED ACTION
This Office action is a reply to the RCE filed on 5/14/2026. Currently, claims 1-7 and 10-14 are pending. Claims 8-9 have been cancelled. No claims have been withdrawn. No new claims have been added.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/14/2026 has been entered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-6 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002364104 (‘JP ‘104’) in view of Rader (US 2803858).
Claim 1, JP ‘104 teaches a building wall provided with at least an underlay face member 2 and an overlay face member 3, the underlay face member directly or indirectly attached to a stud (“the [underlay face member] 2 is attached to the stud 10 with screws and/or an adhesive or the like”’ English translation), the overlay face member being an indoor-facing member (Fig. 1) and connected to the underlay face member (Fig. 1),
wherein a plurality of overlay face members including the overlay face member are installed with a first joint 30 having two sides therebetween (joint 30 has two sides between respective ones of the overlay face members 3), and
wherein a pair of overlay face members including the overlay face member, by which the first joint is interposed, are connected together by a connecting member 40 that straddles the first joint (Figs. 7A-7B), a portion of the connecting member fitted into the first joint (Fig. 7B) and being attached to a front surface of the underlay face member (at 41; Fig. 7B).
JP ‘104 does not teach the connecting member being extended over an indoor-side surface disposed in front of the overlay face member on both sides of the first joint.
However, Rader teaches fastening means for wall panels comprising a connecting member (10, 11, 12 in Figs. 1 and 6; or alternatively just 11, 12 in Fig. 5) extended over an indoor-side surface disposed in front of an overlay face (overlay face of 18 has an indoor-side surface disposed in a front thereof; Figs. 1 and 5-6) on both sides of a first joint (joint in which the connecting member is installed; Figs. 1 and 5-6). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the connecting member of JP ‘104 such that the connecting member is extended over an indoor-side surface disposed in front of the overlay face member on both sides of the first joint, with the reasonable expectation of success of using a known means to connect panels at edges thereof to a surface, such that the connecting member is maintained in a close-fitting, non-undulating flat contact with outer surfaces of the overlay face members (Rader; “extensions [22] possess rigidity and body, enabling the same to be drawn into and maintained in close-fitting, non-undulating, flat contact with the outer surfaces of the marginal regions of the panels”; col. 2, lines 44-46).
Claims 2-3, as modified above, the combination of JP ‘104 and Rader teaches all the limitations of claim 1, and further teaches [claim 2] wherein the connecting member has a first component (Rader 22) straddling the first joint on the indoor-side surface of the overlay face member (Rader 22 straddles the first joint on indoor-side surface of 18, as shown in Fig. 1 or alternatively Figs. 5 or 6), and the first component is connected to the indoor-side surface of the overlay face member (Rader 22 is connected to indoor-side surface of 18), and [claim 3] wherein the connecting member includes a first component (JP ‘104 41 or alternatively Rader 15) that straddles the first joint on a back surface of the overlay face member opposite to an indoor side of the overlay face member (JP ‘104 Fig. 7B or alternatively Rader Figs. 1 or 6), and the first component is connected to the back surface (JP ‘104 Fig. 7B or alternatively Rader Figs. 1 or 6) via a first bonding material (JP ‘104 “an adhesive may be applied to the legs 41 and the legs 41 may be bonded to the boards”; English translation).
Although the combination as above teaches [claim 2] the first component is connected to the indoor-side surface of the overlay face member (Rader 22 is connected to indoor-side surface of 18), the combination does not teach such connection being via a first bonding material.
However, JP ‘104 teaches a first bonding material being used to connect first component (JP ‘104 41) to the overlay face material (JP ‘104; “an adhesive may be applied to the legs 41 and the legs 41 may be bonded to the boards”; English translation). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to incorporate a first bonding material in the connection between the first component and the indoor-side surface of the overlay face member as taught by Rader, with the reasonable expectation of success of using a known connection means to further strengthen the connection, as the adhesive would be expected to create a bond across the entire surface of the joint flange, which would be expected to enhance Rader’s clamped joint, and the adhesive would further be expected to create a tight seal between the first component and the overlay face member, for further reducing noise and preventing drafts.
Claim 4, JP ‘104 further teaches wherein the first joint is a gapped joint (see 30 in Fig. 7B that has a gap between 3 left and 3 right), and the connecting member further includes a second component (second element 41 on the other side of the joint, or alternatively element 42; Fig. 7B) fitted in the first joint (Fig. 7B), and the second component is connected to the underlay face member via a second bonding material (under the broadest reasonable interpretation, the adhesive applied to the second element 41 on the other side of the joint constitutes a second bonding material, as exceedingly broadly claimed; alternatively, element 42 is integrally connected to two elements 41, a second of the elements 41 is connected to the underlay face member via a second bonding material, and thus element 42 is connected to the underlay face member via second member 41 and the second bonding material; Fig. 7B).
Claim 5, JP ‘104 further teaches wherein a plurality of underlay face members including the underlay face member (plurality of elements 2) are installed with a second joint therebetween (second joints 20), and the second bonding material is provided at a position corresponding to the second joint exposed to the gapped joint (under the broadest reasonable interpretation of “a position corresponding to” meaning located near, at or close to the second joint exposed to the gapped joint, JP ‘104’s gapped joints 30 intersect the second joints 20, and the second bonding material is located near, at or close to the second joint exposed to the gapped joint, as exceedingly broadly claimed; see annotated Fig. 7A of JP ‘104 as shown below in Examiner’s Notes).
Claim 6, JP ‘104 further teaches wherein the connecting member is formed of a hat joiner (JP ‘104 illustrated from left to right: 41, 42, 41; Fig. 7B) that is provided with two hat parts 41 and a protrusion 42 connecting the two hat parts together, the two hat parts are the first component (Fig. 7B), and the protrusion is the second component (under the alternative interpretation of claim 4 as above; Fig. 7B).
Claim 10, JP ‘104 further teaches wherein the building wall is a partition wall (Fig. 1), and a face member unit (2, 3, 4) is installed on at least one surface of the stud, the face member unit including at least the plurality of said overlay face members and the underlay face member (Figs. 1-7B).
Claim 11, JP ‘104 further teaches wherein the building wall is an indoor-side wall of an exterior wall (Fig. 1), and a face member unit (2, 3, 4) is installed on one surface of the stud (Figs. 1-7B), the face member unit including at least the plurality of said overlay face members and the underlay face member (Figs. 1-7B).
Claim(s) 7 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2002364104 (‘JP ‘104’) in view of in view of Rader (US 2803858) and further in view of JP 2002309691 (‘JP ‘691’).
Claim 7, JP ‘104 and Rader teach all the limitations of claim 1 as above. JP ‘104 does not teach a steel plate disposed between the overlay face member and the underlay face member, wherein the steel plate functions as a support base that supports, in a cantilever manner, a retrofit-type member that is retrofitted to an indoor-side that is located more inwardly than the overlay face member, the retrofit-type member including at least one of a handrail, a wall hanger, a backrest or an armrest. However, JP ‘691 teaches a steel plate (50, 60 or 70) disposed between an overlay face member 3 and an underlay face member 2 (Figs. 5-7), wherein the steel plate functions as a support base that supports, in a cantilever manner, a retrofit-type member (63, 73; under the broadest reasonable interpretation, elements 63 or 73 each constitute a retrofit-type member, as exceedingly broadly claimed) that is retrofitted to an indoor-side that is located more inwardly than the overlay face member (Figs. 6-7), the retrofit-type member including at least one of a handrail, a wall hanger, a backrest or an armrest (under the broadest reasonable interpretation, elements 63 and 73 are made of gypsum board and are suitable for use as a wall hanger or a backrest, as exceedingly broadly claimed). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the building wall by incorporating a steel plate disposed between the overlay face member and the underlay face member, wherein the steel plate functions as a support base that supports, in a cantilever manner, a retrofit-type member that is retrofitted to an indoor-side that is located more inwardly than the overlay face member, the retrofit-type member including at least one of a handrail, a wall hanger, a backrest or an armrest, with the reasonable expectation of success of using a known means of a steel plate to support a retrofit-type member on the building wall.
Claim 12, JP ‘104 and Rader teach all the limitations of claim 3 as above. JP ‘104 does not teach a steel plate disposed between the overlay face member and the underlay face member, wherein the steel plate functions as a support base that supports, in a cantilever manner, a retrofit-type member that is retrofitted to an indoor-side that is located more inwardly than the overlay face member, the retrofit-type member including at least one of a handrail, a wall hanger, a backrest or an armrest. However, JP ‘691 teaches a steel plate (50, 60 or 70) disposed between an overlay face member 3 and an underlay face member 2 (Figs. 5-7), wherein the steel plate functions as a support base that supports, in a cantilever manner, a retrofit-type member (63, 73; under the broadest reasonable interpretation, elements 63 or 73 each constitute a retrofit-type member, as exceedingly broadly claimed) that is retrofitted to an indoor-side that is located more inwardly than the overlay face member (Figs. 6-7), the retrofit-type member including at least one of a handrail, a wall hanger, a backrest or an armrest (under the broadest reasonable interpretation, elements 63 and 73 are made of gypsum board and are suitable for use as a wall hanger or a backrest, as exceedingly broadly claimed). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the building wall by incorporating a steel plate disposed between the overlay face member and the underlay face member, wherein the steel plate functions as a support base that supports, in a cantilever manner, a retrofit-type member that is retrofitted to an indoor-side that is located more inwardly than the overlay face member, the retrofit-type member including at least one of a handrail, a wall hanger, a backrest or an armrest, with the reasonable expectation of success of using a known means of a steel plate to support a retrofit-type member on the building wall.
Claim 13, as modified above, the combination of JP ‘104, Rader and JP ‘691 teaches all the limitations of claim 12, and further teaches wherein the first component is the steel plate (JP ‘691 Figs. 5-7), and the steel plate has both a function of connecting the pair of overlay face members and a function of serving as the support base (JP ‘691; it is understood that the steel plate is suitable to connect the pair of overlay face members and be the support base, as exceedingly broadly claimed; Figs. 5-7).
Claim 14, as modified above, the combination of JP ‘104, Rader and JP ‘691 teaches all the limitations of claim 13, and appears to further teach wherein an area of the steel plate is 40% or less a total area of the building wall (JP ‘691 Figs. 5-7). In the event that applicant disagrees that JP ‘691 teaches an area of the steel plate being 40% or less a total area of the building wall, the examiner takes the position that it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the steel plate having an area that is 40% or less a total area of the building wall, with the reasonable expectation of success of ensuring the building wall maintains fire resistance with the underlay and overlay face members, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA).
Examiner’s Notes
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440
580
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Annotated Fig. 7A of JP 2002364104 (‘JP ‘104’)
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 and 10-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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