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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Election/Restrictions
Claims 20-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 15 December 2025.
Applicant's election with traverse of claims 1-16 in the reply filed on 15 December 2025 is acknowledged. The traversal is on the ground(s) that the apparatus of claim 23 is “specifically designed to carry out” the method of Invention I, and therefore the inventions are not patentably distinct. This is not found persuasive because Invention I recites method steps only such as positioning supporting elements on a work table; fastening supporting elements; and depositing and fastening a slab-shaped component. Nothing in the method claims require a particular station layout; a plurality of processing devices disposed in line; and/or the specific structural configuration recited in claim 23. The method can be practiced using a single station; a job-shop layout; manual or semi-manual equipment or any apparatus capable of performing the steps. Therefore the apparatus of claims 20-23 is not required to practice the method.
The requirement is still deemed proper and is therefore made FINAL.
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 1-16 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance
Claim 1:
Claim 1 recites the broad recitation supporting elements, and the claim also recites in particular support beams which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2:
Claim 2 recites the broad recitation a dimension, and the claim also recites in particular to the height which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 3:
Claim 3 recites the broad recitation a linear coefficient of expansion α which is 1.5 to 10, and the claim also recites preferably 3 to 6 times which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 6:
Claim 6 recites the broad recitation a clearance, and the claim also recites in particular a clearance for a passage which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 9:
Claim 9 recites the broad recitation a clearance, and the claim also recites in particular a clearance which is formed by a subtractive method on at least one slab-shaped component of the first layer which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13:
Claim 13 recites the broad recitation a bulk material, and the claim also recites in particular an inert bulk material which is the narrower statement of the range/limitation. In addition, claim 13 recites the broad recitation an injectable material, and the claim also recites in particular a fiber-based and/or spherical material, preferably plastic balls which is the narrower statement of the range/limitation. In addition, claim 13 recites the broad recitation an insertable material, and the claim also recites in particular a fibrous web material, preferably a wood-fiber web material which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Compact Prosecution and New Matter
The Office requires examiners to practice compact prosecution and should the examiner determine that an amended claim term or phrase renders the claim rejected under 35 U.S.C. 112(b), the examiner should make a rejection based on indefiniteness under 35 U.S.C. 112(b) as well as a rejection(s) in view of prior art under 35 U.S.C. 102 or 103 that renders the prior art applicable on the examiner’s interpretation of the claim.
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.
The factual inquiries 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 1-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Considine (US 4,841,710) in view of Bardenstein (US 4,403,724).
Claim 1:
Considine discloses a method for producing multi-part building elements comprising a plurality of supporting elements in particular support beams (col. 2, lines 51-53), comprising:
positioning the supporting elements on a work table (208) (fig. 23, col. 8, lines 44-48);
producing a support structure by assembling supporting elements on the work table (208) (fig. 23, col. 8, lines 44-48);
providing and depositing a slab-shaped component (32, 62, 82, 102, 112, 114, 132, 162, 182, 189) on the support structure (fig. 16, col. 6, lines 35-36 and col. 9, lines 28-30);
wherein the slab-shaped component (32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is deposited in such a manner that the support structure is at least approximately covered on one side (fig. 16, col. 6, lines 33-40); and
fastening the slab-shaped component (32, 62, 82, 102, 112, 114, 132, 162, 182, 189) to the support structure (fig. 16, col. 6, lines 35-36 and col. 9, lines 28-30).
Considine does not expressly describe fastening and/or fixing supporting elements to one another prior to panel application. Considine discloses assembling and fixing supporting elements in predetermined relative positions on a work table using fixed and moveable guides (col. 8 line 51 bridging col. 9, line 10). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to mechanically fasten the supporting elements together (e.g. by nailing or screwing studs together) prior to or during panel attachment, as this represents a well-known and routine construction practice in prefabricated wall panel manufacture and merely provides an alternative means of securing the same support structure.
For example, Bardenstein discloses a method of automatic manufacture of wall frames (abstract) comprising producing a support structure by fastening the supporting elements to one another and/or fixing the supporting elements to one another (col. 2, line 66 bridging col. 3, line 32).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to produce the support structure of Considine by fastening and/or fixing supporting elements to one another as taught by Bardenstein in order to secure the supporting elements together to produce a prefabricated supporting structure wall frame ready for installation (Bardenstein, col. 3, lines 31-35). See MPEP §2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results. The results would have been predictable because examiner’s proposed modification of Considine does not change the basic principle operation of Considine.
Claim 2:
Considine in view of Bardenstein renders obvious the method according to claim 1, wherein the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is processed in a prefabrication line (Considine, 200, 202, 203, 204, 205, 207 206) in such a manner that the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) corresponds approximately, in particular in terms of an undersize, to a dimension, of the support structure (Considine, fig. 23, col. 8, lines 3-29). Considine discloses that the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is conveyed through multiple stations (Considine, 200, 202, 203, 204, 205, 207 206) of a production line prior to final assembly, during which the slab-shaped component is processed for example by applying adhesive prior to deposition on the support structure (Considine, fig. 23, col. 8, lines 3-29).
Claim 3:
Considine in view of Bardenstein renders obvious the method according to claim 1, wherein the slab-shaped component is processed in a prefabrication line (fig. 23) in such a manner that the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) at least partially has a clearance, in particular a clearance for a passage, a door, a window and/or an additional component (fig. 23, col. 5, lines 65-67 and col. 7, lines 53-55).
Claim 4:
Considine in view of Bardenstein renders obvious the method according to claim 3, wherein the clearance of the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is deposited and positioned on the support structure in such a manner that an edge of the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is positioned approximately parallel to an edge of a clearance in the building element (figs. 6 and 8, col. 5, line 50 bridging col. 6, line 3). Considine teaches that wall panel sections are arranged and secured to define window and door openings having straight, rectangular boundaries. As shown and described, the edges of the slab-shaped panel sections that define the openings necessarily extend approximately parallel to the corresponding edges of the clearance. In addition, Considine discloses rectangular window and door openings formed in wall panels inherently comprise opposing parallel edges, and arranging panel sections to form such openings necessarily results in the claimed parallel relationship.
Claim 5:
Considine in view of Bardenstein renders obvious the method according to claim 1, wherein a slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is deposited, positioned and/or fastened on the support structure by means of a robot (Considine, 203), wherein the robot (Considine, 203) selects the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) from a supply of processed slab-shaped components (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) and additional slab-shaped components (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) in such a manner that the support structure is at least partially covered, wherein the processed slab-shaped components are conveyed from a prefabrication line by way of a conveyor unit to the robot (Considine, 203) (Considine, fig. 23, col .8, lines 19-43).
Claim 6:
Considine in view of Bardenstein renders obvious the method according to claim 1, wherein a multiplicity of slab-shaped components are deposited on the support structure in such a manner that the slab shaped components form a first layer on the support structure, wherein the contact region of two mutually adjacent slab-shaped components (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is positioned at least approximately in the center of a supporting element (Considine, fig. 11, col. 6, lines 12-19).
Considine employs slab-shaped components formed of engineered wood panels (e.g., wafer board) in combination with supporting elements formed of solid wood framing members. It is a matter of physical fact that such engineered wood panels exhibit a linear coefficient of expansion in the plane of the panel that is significantly greater than the longitudinal coefficient of expansion of solid wood studs, typically by a factor within the claimed range of 1.5 to 10 times. Claim 6 does not require any selection or use of the coefficient of expansion to achieve a functional result, and the claim ratio is therefore an inherent property of the materials disclosed by Considine. MPEP 2144.04 Legal Precedent as Source of Supporting Rational instructs that “where the only difference between the prior art and the claims was a recitation of relative dimensions and the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” See MPEP 2144.04(IV)(A)). A person of ordinary skill is also a person of ordinary creativity, not an automaton and selection of commonly used panel and framing materials having differing expansion coefficients within the claimed range represents routine material choice in wall construction.
Claim 7:
Considine in view of Bardenstein renders obvious the method according to claim 1, wherein a slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is processed in a third prefabrication installation in such a manner that an additional component is added to the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189), wherein the additional component is a part of a shading system (Considine, window cavity, receptacles, switches and fixtures) (Considine, figs. 6 and 8, col. 1, lines 60-68 and col. 5, line 50 bridging col. 6, line 3).
Claim 8:
Considine in view of Bardenstein renders obvious the method according to claim 7, wherein a slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) is disposed on the support structure in such a manner that the additional component (Considine, window cavity, receptacles, switches and fixtures) of the slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) protrudes into a space between two supporting elements of the support structure (Considine, figs. 6 and 8, col. 1, lines 60-68 and col. 5, line 50 bridging col. 6, line 3).
Claim 9:
Considine in view of Bardenstein renders obvious the method according to claim 7, wherein the building element has a first layer of slab-shaped components (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189), which has a clearance, in particular a clearance which is formed by a subtractive method (Considine, cutting) on at least one slab-shaped component (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) of the first layer, wherein the clearance is designed in such a manner that the additional component protrudes (Considine, window cavity, receptacles, switches and fixtures) in the assembled state into the clearance (Considine, figs. 6 and 8, col. 1, lines 60-68 and col. 5, line 50 bridging col. 6, line 3).
Claim 10:
Considine in view of Bardenstein renders obvious the method according to claim 1, wherein a plurality of supporting elements (studs) are processed by a processing device (guides) on a main production line (Considine, 208) so as to form a support structure of a building element (wall panel assembly), while a component (adhesive) of a building element (wall panel assembly), is simultaneously processed on a prefabrication line (206) which has a prefabrication installation in the form of an additional processing device (rollers) for processing a component (adhesive) of a building element (Considine, fig. 23, col. 8, lines 32-43).
Claim 11:
Considine in view of Bardenstein renders obvious the method according to claim 10, wherein the component (Considine, adhesive) is processed on a prefabrication line and subsequently conveyed to a processing device (guides) of the main production line in order to produce a building element (Considine, fig. 23, col. 8, lines 32-43).
Claim 12:
Considine in view of Bardenstein renders obvious the method according to claim 1, comprising further method steps:
turning the building element in such a manner that the support structure bears on the slab-shaped component on a work table (Considine, sole plate and foundation) in such a manner that a space between the supporting elements is accessible (Considine, fig. 21, col. 7, lines 7-19);
inserting a structural component (Considine, doors into cavity 132 of header 34, 84, 104, 116, 142, 164) onto the slab-shaped component in the space between the supporting elements of the building element (Considine, figs. 13-15, col. 6, lines 20-33);
incorporating a filler material (Considine, EPS, 140) into the space between the supporting elements (Considine, figs. 13-15, col. 6, lines 20-33);
wherein the filler material (Considine, EPS, 140) is distributed in the space and at least approximately held in position by means of the structural component (Considine, figs. 13-15, col. 6, lines 20-33). As shown in figs. 13-15, installation of a door into the cavity will also at least approximately retain adjacent filler material (EPS, 140) in position and header 142 will also at least approximately retain adjacent filler material (EPS, 140).
Claim 13:
Considine in view of Bardenstein renders obvious the method according to claim 12, wherein the filler material (Considine, EPS) comprises a bulk material (Considine, col. 2, lines 27-30).
Claim 14:
Considine in view of Bardenstein renders obvious the method according to claim 12, wherein the structural component has a three-dimensional structure with a plurality of struts (Considine, 34, 84, 104, 116, 142, 164) which in top view has the shape of a multiplicity of rectangles (Considine, figs 13-14, col. 6, lines 24-27).
Claim 16:
Considine in view of Bardenstein renders obvious the method according to claim 12, comprising a further method step, wherein the support structure is populated with slab-shaped components (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189), wherein the slab-shaped components are deposited on the support structure in such a manner that a filler material (Considine, EPS) is enclosed from a plurality of sides by the support structure and the slab-shaped components (Considine, 32, 62, 82, 102, 112, 114, 132, 162, 182, 189) (Considine, figs. 20 and 21, col. 2, lines 27-30; col. 2, lines 51-56 and col. 6, lines 41-58).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Considine in view of Bardenstein as applied to claim 12 above, and further in view of Moser (WO 2015/121762 A2).
Claim 15:
Considine in view of Bardenstein renders obvious the method according to claim 12; and Considine in view of Bardenstein fails to disclose the structural component comprises a fibrous material with a plurality of approximately hexagonal honeycomb structures, and has a slab-shaped fibrous element which covers the structural component on one side and holds a bulk material at least approximately in position, wherein the bulk material comprises a material with a bulk density of 1000 kg/m³ to 2000 kg/m³, preferably 1400 kg/m3 to 1600 kg/m³.
Moser discloses structural insulated building panels consisting of an insulating core including a fibrous material with a plurality of approximately hexagonal honeycomb structures (composite honeycomb), and has a slab-shaped fibrous element which covers the structural component on one side and holds a bulk material at least approximately in position, wherein the bulk material comprises a material with a bulk density of 1000 kg/m³ to 2000 kg/m³, preferably 1400 kg/m3 to 1600 kg/m³ (cement that is reinforced with fibers to form cement composites – fiber cement) (page 1, lines 28-35).
Considine in view of Bardenstein renders obvious prefabricated wall panels in which slab-shaped structural elements retain structural components during panel assembly. Moser describes, as known in the art, prefabricated wall panels comprising composite honeycomb core materials and fiber-reinforced cement composite structural layers. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to install the composite honeycomb core and fiber-cement slab materials acknowledged in Moser within the prefabricated wall panel structures taught by Considine, as the combination represents the predictable use of known materials for their well-known and established functions. See MPEP §2143 A which describes the prima facie obviousness of combining prior art elements according to known methods to yield predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Collins et al. (US 11,060,286 B2) discloses prefabricated wall panels. van der Lely (US 3,958,320) discloses a method and factory for making prefabricated wall panels.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lee Holly whose telephone number is (571)270-7097. The examiner can normally be reached Monday - Friday 8:00 to 5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lee A Holly/Primary Examiner, Art Unit 3726