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 .
Claim Objections
Claims 1-12 are objected to because of the following informalities:
With regard to claim 1: Lines 8 and 14 of the claim, it appears each instance of the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language.
With regard to claim 2: Lines 1-2 of the claim, it appears each instance of the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language.
With regard to claim 3: Lines 1-3 of the claim, it appears each instance of the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language.
With regard to claim 4: Lines 1-2 of the claim, it appears each instance of the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language.
With regard to claim 6: Line 1 of the claim, it appears the limitation “the dry cast concrete” should be --the dry cast concrete backer block-- for consistency of the claim language.
With regard to claim 7: Lines 4, 10 and 16 of the claim, it appears each instance of the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language. Line 19 of the claim, it appears the limitation “the flat opposing upper and lower surfaces” should be --the substantially flat opposing upper and lower surfaces-- for consistency of the claim language.
With regard to claim 8: Lines 1-2 of the claim, it appears each instance of the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language.
With regard to claim 9: Line 1 of the claim, it appears the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language.
With regard to claim 11: Lines 1-2 of the claim, it appears the limitation “the backer block” should be --the dry cast concrete backer block-- for consistency of the claim language.
Appropriate correction is required.
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 1-12 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 1: Line 6 of the claim, the limitation “the simulated stone surface” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to --the simulated natural stone exterior face--. Line 10 of the claim, the limitation “the liquid wet cast concrete” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to --the liquid phase of the wet cast concrete--. Line 14 of the claim, it’s unclear if the limitation “solid phase wet cast concrete” is referencing the previously recited solid phase of the wet cast concrete. For the purpose of examination, the limitation is considered to be directed to --the solid phase of the wet cast concrete--.
With regard to claims 2-3: Line 1-2 of the claim, the limitation “the liquid phase wet cast concrete” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to --the liquid phase of the wet cast concrete--.
With regard to claim 7: Line 8 of the claim, the limitation “the simulated stone surface” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to --the simulated natural stone exterior face--. Line 12 of the claim, the limitation “the liquid wet cast concrete” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to --the liquid phase of the wet cast concrete--. Line 16 of the claim, it’s unclear if the limitation “solid phase wet cast concrete” is referencing the previously recited solid phase of the wet cast concrete. For the purpose of examination, the limitation is considered to be directed to --the solid phase of the wet cast concrete--.
With regard to claims 8-9: Line 1-2 of the claim, the limitation “the liquid phase wet cast concrete” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to --the liquid phase of the wet cast concrete--.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 10,883,267 and claims 1-6 of U.S. Patent No. 11,802,406. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
Allowable Subject Matter
Upon the filing a Terminal Disclaimer, claims 1-12 would be allowable if rewritten or amended 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.
The following is a statement of reasons for the indication of allowable subject matter:
The combination of all the steps of claimed method of manufacturing a hardscaping block having a simulated natural stone exterior face, in particular allowing the liquid wet cast concrete to transition to a solid phase while the contact surface is in contact with the wet cast concrete, such that the wet cast concrete has a first surface that bonds to the contact surface as a result of the penetration of the wet cast concrete into the pores and an opposing second surface, defining a veneer, that takes on the appearance of the interior surface of the mold, the backer block and solid phase wet cast concrete bonded thereto defining the hardscaping block is not adequately taught or suggested in the cited prior art of record.
Conclusion
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
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