Notice of Pre-AIA or AIA Status
This is in response to the application filed on November 15, 2024. Claim 2 is canceled and withdrawn from consideration. Claims 1 and 3-17 stand rejected as set forth below. 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.
Claim 11 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 11, the statement “relatively high strength” is indefinite as it does not define what a relatively high strength is.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 10 states that “the web extends the full length of the flanges, or extends beyond the length of the flanges, or the web is shorter than the length of the flanges”. This claim is not limiting as it covers all possible configurations. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1, 3-6, 8, 10-12, and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Scarlett (US 5323584).
In regard to Claim 1, Scarlett discloses a composite timber structural member comprising: a first timber flange (upper chord 20) having a first longitudinal slot (groove 23) formed therein, a second timber flange (lower chord 10) that is substantially parallel to the first timber flange (Fig 1) [col 4, lines 18-35] and having a second longitudinal slot (groove 13) formed therein, and a web (web 30) having a first long edge region (‘peripheral edge 33’ disposed in ‘groove 23’) (Fig 1, 2) and an opposing second long edge region (‘peripheral edge 33’ disposed in ‘groove 13’) (Fig 1, 2), the first and second long edge regions being disposed in the first (groove 23) and second (groove 13) longitudinal slots, respectively, wherein the first and/or second long edge region(s) (peripheral edge 33) comprise(s) a shoulder portion (shoulders 32) from which a tongue portion (tongue 31) extends, the tongue portion (tongue 31) having a thickness less than that of the shoulder portion from which it extends (Fig 2), the shoulder portion (shoulders 32) and the tongue portion (tongue 31) together presenting only planar and curved external surfaces to the internal surfaces of its/their respective slots (Fig 1, 2) or being devoid of any outwardly directed sharp corner, and each slot (groove 23, 13) is shaped and dimensioned so as to receive the long edge region (peripheral edge 33) disposed within it (col 6, lines 12-28).
In regard to Claim 3, Scarlett discloses the composite timber structural member of claim 1 wherein the long edge region(s) (peripheral edge 33) of the web (web 30) is/are the region(s) that is/are disposed within the slot (groove 23, 13) (Fig 1, 2).
In regard to Claim 4, Scarlett discloses the composite timber structural member of claim 1 wherein the tongue region(s) (tongue 31) has/have a planar terminal face (peripheral edge 33) (Fig 2).
In regard to Claim 5, Scarlett discloses the composite timber structural member of claim 1 wherein the tongue region(s) (tongue 31) has/have opposing lateral planar faces (‘peripheral edge 33’ disposed in ‘groove 23’ and ‘groove 13’) (Fig 1, 2) [col 4, lines 64-66].
In regard to Claim 6, Scarlett discloses the composite timber structural member of claim 1 wherein the tongue region(s) (tongue 31) is/are of substantially even thickness (Fig 1, 2) [col 4, lines 64-66].
In regard to Claim 8, Scarlett discloses the composite timber structural member of claim 1 wherein the web (web 30), when viewed end-on, has an axis of symmetry (Fig 1, 2).
In regard to Claim 10, Scarlett discloses the composite timber structural member of claim 1 wherein the web (web 30) extends the full length of the flanges (upper chord 20, lower chord 10) (Fig 1) [col 4, lines 18-27], or extends beyond the length of the flanges, or the web is shorter than the length of the flanges.
In regard to Claim 11, Scarlett discloses the composite timber structural member of claim 1 wherein the web (web 30) is formed of a relatively high strength planar material [col 1, lines 17-34] [col 7, lines 18-20].
In regard to Claim 12, Scarlett discloses the composite timber structural member of claim 1 wherein the web (web 30) is formed of a material (plywood material) selected from the group consisting of: timber, processed timber; chipboard, plywood (plywood material), oriented strand board, metal sheet, metal plate, fiber reinforced cement sheet, plastic, and fiber reinforced plastic material [col 1, lines 17-34] [col 7, lines 18-20].
In regard to Claim 16, Scarlett discloses the composite timber structural member of claim 1 wherein the first (upper chord 20) and/or second flange (lower chord 10) has/have a planar surface (peripheral edge 33) distal to the planar web (web 30) and at about 90 degrees to the flange slot (groove 23, 13) (Fig 1, 2) [col 4, lines 53-56] [col 5, lines 6-24].
In regard to Claim 17, Scarlett discloses the composite timber structural member of claim 1 wherein the first (upper chord 20) and/or second slot(s) (lower chord 10) is/are oversized so as to accommodate its respective long edge region with a layer of adhesive [col 5 line 63 - col 6 line 8].
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 7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Scarlett (US 5323584).
In regard to Claim 7, Scarlett discloses the composite timber structural member of claim 1 wherein there are tongue region(s) (tongue 31) and shoulder region(s) (shoulders 32) from which it/they extends (Fig 2), but does not specifically disclose wherein the tongue regions are about 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55% or 60% the thickness of the shoulder region(s). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the tongue regions about 20%, 25%, 30%, 35%, 40%, 45%, 50%, 55% or 60% the thickness of the shoulder regions in order to ensure that the web is effectively notched into the grooves. This reasoning is evidenced by MPEP 2144.05 II A.
In regard to Claim 9, Scarlett discloses the composite timber structural member of claim 1 wherein the web (web 30) extends into the flange (upper chord 20, lower chord 10) (Fig 1), but it does not specifically disclose wherein the web (web 30) extends to a depth of between about 20% to about 80% of the diameter of the flange (upper chord 20, lower chord 10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the web extend to a depth of between about 20% to about 80% of the diameter of the flange in order to ensure that the web is effectively notched into the grooves. This reasoning is evidenced by MPEP 2144.05 II A.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Scarlett (US 5323584) and further in view of Thornton (US 20170096813).
In regard to Claim 13, Scarlett discloses the composite timber structural member of claim 1, but does not disclose wherein the first and/or second flange has a substantially circular cross-section. Thornton discloses a structural member wherein the first (round 102) and/or second flange (round 104) has a substantially circular cross-section (Fig 1) [0010]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to shape the flanges of the structural members of Scarlett with the circular cross sections of Thornton in order to have the least amount of material waste.
In regard to Claim 14, Scarlett discloses the composite timber structural member of claim 1, but does not disclose wherein the first and/or second flange is a timber pole or a timber round. Thornton discloses wherein the first (round 102) and/or second flange (round 104) is a timber pole or a timber round (timber round) (Fig 1) [0010]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the timber rounds of Thornton for the flanges of the structural members of Scarlett in order to have the least amount of material waste.
In regard to Claim 15, Scarlett discloses the composite timber structural member of claim 1, but does not disclose wherein the first and/or second flange is/are a peeler core. Thornton discloses wherein the first (round 102) and/or second (round 104) flange is/are a peeler core (peeler core) (Fig 1) [0014] [0079]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the peeler cores of Thornton for the flanges of the structural members of Scarlett in order to use a material that is highly cost-effective
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Audrey Fisher whose telephone number is (571)272-2849. The examiner can normally be reached Monday to Friday 7:30-4:30.
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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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/Audrey Fisher/Examiner, Art Unit 3635
/BRIAN D MATTEI/Supervisory Patent Examiner, Art Unit 3635
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