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 .
Status of Claims
The present application is said to be a CON of Application No. 17/884,451. Claims 1-6, 8-17 and 19-22 are pending. Claims 1-6 and 21 are subject to examination in this Office action. Claims 8-17, 19, 29 and 22 are withdrawn (non-elected). Claims 7 and 18 were previously canceled.
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-6 and 21) in the reply filed on 15 April 2026 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted to date are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the Examiner.
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.
Claims 5 and 21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 5, the term “an anchor” is recited. Is this anchor the same as or different from the previously recited anchor? Clarification is requested.
Regarding claim 5, the term “a structure” is recited. Is this structure the same as or different from the previously recited building structure? Clarification is requested.
Regarding claim 21, the term “a substrate” is recited. Is this substrate the same as or different from the previously recited substrate? Clarification is requested.
Regarding claim 21, the term “a structure” is recited. Is this structure the same as or different from the previously recited building structure? Clarification is requested.
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 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.
Claims 1, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Martin (U.S. Patent No. 5,956,907).
Regarding independent method claim, Martin describes a method of installing a prefabricated modular building unit, the method comprising:
providing the prefabricated modular building unit (10);
positioning the prefabricated modular building unit on an underlying substrate (i.e., floor 103) and proximal to at least one wall (see e.g., Figs. 1 and 2);
securing the prefabricated modular building unit by providing an anchor (23, 60) extending through at least a portion of the prefabricated modular building unit and through an element (105) of an existing building structure (see e.g., Figs. 1, 3 and 4).
Regarding claim 4, wherein the anchor is provided proximal to a blind corner of two walls of the existing building structure (see e.g., Figs. 1, 3 and 4).
Regarding claim 6, wherein a hole or aperture (107) operable to receive the anchor is preformed in the underlying substrate.
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as unpatentable over Martin as applied above, and further in view of Guatteri (U.S. Patent Application Publication No. 2007/0225917).
Martin does not appear to expressly describe identifying and utilizing seismic data in his installation process. As evidenced by Guatteri, it was old and well-known in the art to identify and utilize seismic data as desired (see e.g., Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to identify and utilize seismic data as claimed with a reasonable expectation of success because it would have bolstered the structural integrity of the building unit. Such combination of known prior art elements that merely yields predictable results would have been obvious to one skilled in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16.
Accordingly, Martin as modified by Guatteri results in the claimed invention.
Claims 5 and 21 are rejected under 35 U.S.C. 103 as unpatentable over Martin as applied above, and further in view of Maxwell (U.S. Patent No. 3,541,744).
Regarding claim 5, Martin does not appear to expressly describe the step of providing at least one of an anchor and a brace between an upper portion of the prefabricated modular building unit and a structure or slab above the prefabricated modular building unit. As evidenced by Maxwell, it was old and well-known in the art to provide at least one of an anchor and a brace (58, 60) between an upper portion of the prefabricated modular building unit and a structure or slab (34) above the prefabricated modular building unit (Fig. 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide at least one of an anchor and a brace between an upper portion of the prefabricated modular building unit and a structure or slab above the prefabricated modular building unit with a reasonable expectation of success because it would have bolstered the structural integrity of the building unit. Such combination of known prior art elements that merely yields predictable results would have been obvious to one skilled in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-16.
Accordingly, Martin as modified by Maxwell results in the claimed invention.
Regarding claim 21, wherein the element of the existing building structure comprises a substrate or a structure or surface above the modular building unit (see e.g., Maxwell Fig. 3).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Please be advised that a web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-6 and 21 are rejected on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1-11 of U.S. Patent No. 12,065,823.
Although the conflicting claims are not identical, they are not patentably distinct from each other because all of the structural elements recited in the rejected claims are present in the noted claims of the '823 patent or they are obvious variants.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Refer to the attached Form PTO-892.
Authorization for Email Communication – In the event Applicant wishes to communicate with the Examiner via electronic mail, written authorization should be provided in Applicant’s next response. See MPEP § 502.03. The following is a sample authorization form which may be used by Applicant:
Recognizing that Internet communications are not secure, we hereby authorize the USPTO to communicate with any authorized representative concerning any subject matter of this application by electronic mail. We understand that a copy of these communications will be made of record in the application file.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY MINTZ whose telephone number is (571)270-7327. The examiner can normally be reached on M-Th 0730 - 1630 EDT.
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/RODNEY MINTZ/Primary Examiner, Art Unit 3635
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