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 .
Specification
The disclosure is objected to because of the following informalities:
Par. [0001] should be amended to reflect that U.S. Application 18/137,300 has been issued as U.S. Patent No. 12,104,376.
Appropriate correction is required.
Claim Objections
Claims 12-13 are objected to because of the following informalities:
With regard to claim 12: Line 2 of the claim, it appears the limitation “the system” should be –the alignment and fastening system-- for consistency of the claim language.
With regard to claim 13: Line 10 of the claim, it appears the limitation “a wall or a roof” should be --the wall or the roof-- for consistency of the claim language.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: an alignment and fastening system in claim 11; positioning component in claims 14-15 and 20-21; a locking component in claims 14-15 and 20-21; and mounting elements in claims 14-15 and 20-21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 6-10, 13 and 18-21 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.
With regard to claim 6: Line 1 of the claim, it’s unclear if the limitation “adjacent panels” is referencing the previously recited panel. Line 2 of the claim, the limitation “the front surface of the facades of adjacent panels” lacks sufficient antecedent basis. Further, it’s unclear if the limitation “adjacent panels” found in line 2 of the claim is referencing the previously recited adjacent panels.
With regard to claim 7: Line 3 of the claim, the limitation “the front surfaces of the facades of the adjacent panels” lacks sufficient antecedent basis.
With regard to claim 8: Line 2 of the claim, the limitation “the structural element of one panel” lacks sufficient antecedent basis. Further, it’s unclear if the limitation “one panel” found in line 2 of the claim is referencing one of the previously recited panels. Lines 2-3 of the claim, the limitation “the structural element of another panel” lacks sufficient antecedent basis. Further, it’s unclear if the limitation “another panel” found lines 2-3 of the claim is referencing one of the previously recited panels.
With regard to claim 9: Line 2 of the claim, it’s unclear if the limitations “one panel” and “another panel” are referencing the previously recited panels.
With regard to claim 10: Line 2 of the claim, it’s unclear if the limitation “a pair of adjacent panels” is referencing the previously recited panels. Line 4 of the claim, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Further, the scope of is unclear. Examiner notes that claims 7-9 appear to positively recited the overlapping relationship, but claim 10 appears to recite the overlapping relationship as an intended use. Clarification is requested.
With regard to claim 13: Lines 10-11 of claim, the limitation “the two panels” lacks sufficient antecedent basis.
With regard to claims 18-19: Line 1 of the claim, the term “when” renders the claim indefinite because it’s unclear if whether the limitation(s) following the term are further defining the panel.
Claims 6-10, 13 and 18-21 are examined as best understood.
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.
Claim(s) 1-12, 16-19 and 22-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Linn (US 2002/0088199 A1).
With regard to claim 1: Linn discloses a panel (10 or 11) for a wall that is adapted to be mounted to a structural framework of the wall or the roof, the panel (10 or 11) including at least two components that are connected together (figs. 1-2), with the at least two components comprising:
a façade (X or 30) that has an outer surface that defines a front surface of the panel and a rear surface (figs. 1-2), and
a structural element (Y or 12) connected to and supporting the façade (X or 30) (figs. 1-2).
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Fig. 1: Linn (US 2002/0088199 A1).
With regard to claim 2: Linn discloses that the structural element (Y or 12) includes a profiled sheet having parallel ribs and parallel troughs positioned with the parallel ribs or the parallel troughs contacting and connected to the rear surface of the façade (X or 30) (figs. 1-2).
With regard to claim 3: Linn discloses that the façade (30) and the structural element (12) are connected together with an adhesive (fig. 2; par. [0023]).
With regard to claim 4: Linn discloses that the façade (30) and the structural element (12) are mechanically connected together via a mechanical interlock (via fasteners) between the façade (30) and the structural element (12) (figs. 2; par. [0023]).
With regard to claim 5: Linn discloses that the front surface of the façade (30) is a flat surface (fig. 2).
With regard to claim 6: Linn discloses that the panel (11) is formed so that, in use, an overlapping relationship with the front surface of the façade (30) of the panel (11) and a front surface of a facade of an adjacent panel (11’) forming a continuous front surface on the wall (fig. 2).
With regard to claim 7: Linn discloses that the overlapping relationship is chosen from the group consisting of a side-by-side relationship, an end-to-end relationship, or a combination thereof, with the front surfaces of the façades (30) of the panel (11) and the adjacent panel (11’) forming a continuous front surface on the wall (fig. 2).
With regard to claim 8: Linn discloses that the overlapping relationship involves a section of the structural element (12) of the panel (11) covering a section of the structural element (12) of the adjacent panel (11’) (fig. 2).
With regard to claim 9: Linn discloses that the overlapping relationship involves a section of the panel (11) covering a section of the adjacent panel (11’) (fig. 2).
With regard to claim 10: Linn discloses that the panel (11) is formed so that the panel (11) and the adjacent panel (11’), in use, are in the overlapping relationship with the panel (11) extending partially over and covering the adjacent panel (11’) and forming a continuous front surface on the wall (fig. 2).
With regard to claim 11: Linn discloses an alignment and fastening system (32, 34 and 36) capable of facilitating alignment of the panel (11) in relation to other panels and the structural framework (framed building exterior surface include a red iron steel building frame) and fastening the panel to the structural framework (framed building exterior surface include a red iron steel building frame) (figs. 2 and 4-6; par. [0018]; claim 1). Examiner notes that the alignment and fastening system of Linn is considered functionally equivalent to applicant’s disclosed alignment and fastening system.
With regard to claim 12: The alignment and fastening system (32, 34 and 36) of Linn is a concealed system such that the system is not visible when a person views the panel positioned on a wall (figs. 2 and 4-6).
With regard to claim 16: Linn discloses that the structural element (Y) is completely behind the façade (X) (figs. 1-2).
With regard to claim 17: Linn discloses that the structural element (12) is partially behind the façade (30) and extends partially laterally in relation to the façade (30) (fig. 2).
With regard to claim 18: Linn discloses that the structural element (12) is a profiled sheet (12), the profiled sheet (12) extends partially laterally from at least one side of the façade (30) as an exposed section or as exposed sections that is/are visible when the panel (11) is viewed in a direction looking towards the façade (30). Note that the point of view is not limited to the front of the panel, but can include viewing locations from the side of the panel or behind the panel.
With regard to claim 19: Linn discloses that the structural element (12) is a profiled sheet, the profiled sheet (12) extends partially from two sides of the façade (30) as two exposed sections that are visible when the panel (11) is viewed in a direction looking towards the façade (30) (fig. 2). Note that the point of view is not limited to the front of the panel, but can include viewing locations from the side of the panel or behind the panel.
With regard to claim 22: Linn discloses that the façade (X or 30) is quadrilateral with a first pair of parallel sides and a second pair of parallel sides (figs. 1-2; par. [0019]-[0020]).
With regard to claim 23: Linn discloses that the sides of the first pair of parallel sides include complementary formations adapted for an overlapping relationship with an adjacent said panel (fig. 2).
With regard to claim 24: Linn discloses that one side of the first pair of parallel sides includes an extension (Z) of the front surface of the façade capable of being fastened to the structural framework and then covered by an adjacent panel when, in use, the adjacent panel is positioned in the overlapping relationship (figs. 1-2).
Examiner notes that recitations directed to the structural framework and adjacent panel are related to an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
With regard to claim 25: Linn discloses a wall constructed from a plurality of the panels defined in claim 1 connected to a structural framework (framed building exterior surface include a red iron steel building frame) (figs. 1-2; par. [0018]; claim 1).
Claim(s) 1-2, 4-7, 9-11 and 14-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ashman (US 2,873,008).
With regard to claim 1: Ashman discloses a panel (overlapping corrugated section, 5 and wing section, 6) for a roof that is adapted to be mounted to a structural framework of the wall or the roof, the panel (overlapping corrugated section, 5 and wing section, 6) including at least two components that are connected together (fig. 2), with the at least two components comprising:
a façade (wing section, 6) that has an outer surface that defines a front surface of the panel and a rear surface (fig. 2; col. 1, lines 15-18), and
a structural element (corrugated section, 5 underlying respective wing section, 6) connected to and supporting the façade (6) (fig. 2).
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Fig. 2: Ashman (US 2,873,008)
With regard to claim 2: Ashman discloses that the structural element (corrugated section, 5 underlying respective wing section, 6) includes a profiled sheet having parallel ribs and parallel troughs positioned with the parallel ribs or the parallel troughs contacting and connected to the rear surface of the façade (wing section, 6) (fig. 2).
With regard to claim 4: Ashman discloses that the façade (wing section, 6) and the structural element (corrugated section, 5 underlying respective wing section, 6) are mechanically connected together via a mechanical interlock (via screws 15) between the façade (wing section, 6) and the structural element (corrugated section, 5 underlying respective wing section, 6) (fig. 2).
With regard to claim 5: Ashman discloses that the front surface of the façade (wing section, 6) is a flat surface (fig. 2).
With regard to claim 6: Ashman discloses the panel (overlapping corrugated section, 5 and wing section, 6) is formed so that, in use, the panel and adjacent said panel are in an overlapping relationship, with the front surfaces of the façades (6) of the panel and the adjacent said panel forming a continuous front surface on the roof (fig. 2).
With regard to claim 7: Ashman discloses that the overlapping relationship is chosen from the group consisting of a side-by-side relationship or an end-to-end relationship, with the front surfaces of the façades (6) of the panels forming a continuous front surface on the roof (fig. 2).
With regard to claim 9: Ashman discloses that the overlapping relationship involves a section of the panel (overlapping corrugated section, 5 and wing section, 6) covering a section of the another said panel (fig. 2).
With regard to claim 10: Ashman discloses that the panel (overlapping corrugated section, 5 and wing section, 6) is formed so that the adjacent said panel, in use, are in the overlapping relationship with the panel extending partially over and covering the adjacent panel and forming a continuous front surface on the roof (fig. 2).
With regard to claim 11: Ashman discloses an alignment and fastening system (openings and corresponding screws 15) capable of facilitating alignment of the panel in relation to other panels and the structural framework and fastening the panel to the structural framework.
With regard to claim 14: Ashman discloses that the alignment and fastening system includes openings (for receiving screws 15) in the structural element (corrugated section, 5 underlying respective wing section, 6) that each have a positioning component (spacing of openings) and a locking component (perimeter of openings for engagement with screws) that, in use, locate the panel in a correct alignment on mounting elements connected to the structural framework (building).
With regard to claim 15: Ashman discloses that the alignment and fastening system includes openings (for receiving screws 15) in the structural element (corrugated section, 5 underlying respective wing section, 6) that each have a positioning component (spacing of openings) and a locking component (perimeter of openings for engagement with screws) that, in use, locate the panel on mounting elements that mount another panel to the structural framework (building).
With regard to claim 16: Ashman discloses that the structural element (corrugated section, 5 underlying respective wing section, 6) is completely behind the façade (6) (fig. 2).
With regard to claim 17: Ashman discloses that the structural element (corrugated section, 5 underlying respective wing section, 6) is partially behind the façade (6) and extends partially laterally in relation to the façade (6) (fig. 2).
With regard to claim 18: Ashman discloses that the structural element (corrugated section, 5 underlying respective wing section, 6) is a profiled sheet, the profiled sheet extends partially laterally from at least one side of the façade (6) as an exposed section or as exposed sections that is/are visible when the panel is viewed in a direction looking towards the façade (6) (fig. 2). Note that the point of view is not limited to the front of the panel, but can include viewing locations from the side of the panel or behind the panel.
With regard to claim 19: Ashman discloses that the structural element corrugated section, 5 underlying respective wing section, 6) is a profiled sheet, the profiled sheet extends partially from two sides of the façade (6) as two exposed sections that are visible when the panel is viewed in a direction (from one of the sides) looking towards the façade (6). Note that the point of view is not limited to the front of the panel, but can include viewing locations from the side of the panel or behind the panel.
With regard to claim 20: Ashman discloses that the exposed section or the exposed sections includes openings (for receiving screws 15) that each have a positioning component (spacing of openings) and a locking component (perimeter of openings for engagement with screws) that, in use, locate the panel in a correct alignment on mounting elements that are connected (at least indirectly) to the structural framework.
With regard to claim 21: Ashman discloses that the exposed section or sections includes openings (for receiving screws 15) that each have a positioning component (spacing of openings) and a locking component (perimeter of openings for engagement with screws) that, in use, locate the panel in a correct alignment on mounting elements that are connected (at least indirectly) to the structural framework.
With regard to claim 22: Ashman discloses that the façade (6) is quadrilateral with a first pair of parallel sides and a second pair of parallel sides (fig. 2).
With regard to claim 23: Ashman discloses the sides of the first pair of parallel sides include complementary formations adapted for an overlapping relationship with an adjacent said panel (fig. 2).
With regard to claim 24: Ashman discloses that one side of the first pair of parallel sides includes an extension of the front surface of the façade (6) that is capable of being fastened to the structural framework and covered by an adjacent said panel when, in use, the adjacent said panel is positioned in an overlapping relationship.
With regard to claim 25: Ashman discloses a roof constructed from a plurality of the panels defined in claim 1 connected to a structural framework (building) (fig. 1-3; col. 1, lines 15-18).
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 and 14-25 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 11,702,838. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements if the instant claims can be found within the instance claims.
Claims 1-25 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,104,376. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements if the instant claims can be found within the instance claims.
Allowable Subject Matter
Upon the filing of a terminal disclaimer, claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The combination of the all the elements of the claimed panel, in particular the alignment an fastening system including an elongate retainer member that is connected to the structural element on a bottom surface of the structural element, with the elongate retainer member and the structural element defining a plurality of spaced-apart slots; and an elongate retainer element that is connected to the front surface of the façade on a front surface of the panel and includes an elongate strap and a series of tabs that extend from one side of the strap, with a first series of tabs including openings to facilitate fastening the first series of tabs to the structural framework and a second series of tabs to extend into the plurality of spaced-apart slots of the elongate retainer member of a panel in a successive row that, in use in construction of the wall or the roof, is formed and thereby locates the panel and another panel together is not adequately taught or suggested in the cited prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited are directed to panels comprising structural elements having corrugations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633