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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-6, and 8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent No. 12,180,736 to Richison (“Richison”).
Regarding claim 1, Richison discloses a reusable structural member, the reusable structural member comprising: a structural profile 20 having: a length, a width, and a thickness; a first side and a second side opposite the first side, the first 40 and second 50 sides defining the width and the length; a first edge 60B and a second edge 60L opposite the first edge, each of the first and second edges extending between the first and second sides and defining the thickness; a plurality of support beams 60H, I, J, K, each support beam extending between the first side and the second side; and a fastener 69a disposed at a first end of each of the plurality of support beams; and an interfacial layer 100, wherein the fasteners help secure the interfacial layer to the structural profile.
Regarding claim 3, Richison discloses that the interfacial layer 100 is configured to contact concrete while concrete is poured and sets.
Regarding claim 4, Richison discloses that the interfacial layer is resistant to water or other liquid absorption.
Regarding claim 5, Richison discloses that each of the fasteners is a male fastener 69a that extends beyond the first side of the structural profile.
Regarding claim 6, Richison discloses that the male fastener comprises a pair of protrusions 69a surrounded by a portion of the interfacial layer.
Regarding claim 8, Richison discloses that the structural profile is formed of metal (col 3, ln 39-41).
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.
Claim(s) 1-4, 7, 10, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2020/0139652 to Collar et al. (“Collar”) in view of U.S. Patent No. 8,065,848 to Carlson et al. (“Carlson”).
Regarding claim 1, Collar discloses a reusable structural member 1, the reusable structural member comprising: a structural profile having: a length, a width, and a thickness; a first side 5 and a second side 6 opposite the first side, the first and second sides defining the width and the length; a first edge 3 and a second edge 4 opposite the first edge, each of the first and second edges extending between the first and second sides and defining the thickness; a plurality of support beams 8, each support beam extending between the first side and the second side; and an interfacial layer 11.
Collar does not disclose a fastener disposed at a first end of each of the plurality of support beams; wherein the fasteners help secure the interfacial layer to the structural profile.
Carlson in Fig. 45B discloses a structural profile 4500 comprising a fastener 4416 disposed at a first end of each of a plurality of support beams (members forming 4420); wherein the fasteners help secure an interfacial layer (recycled HDPE) to the structural profile.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the structural profile of Collar to have a fastener disposed at a first end of each of the plurality of support beams; wherein the fasteners help secure the interfacial layer to the structural profile, and wherein at least one of the support beams and the interfacial layer comprises recycled material as taught in Carlson with a reasonable expectation of success because recycled material would allow for a more sustainable product and the fastener with the interfacial layer would improve rigidity of the structural profile and its bond with the interfacial layer. Moreover, the method steps of making a reusable modular structural members as recited in claim 16 would necessarily be performed in making the structure of Collar as modified by Carlson.
Regarding claim 2, Collar in view of Carlson discloses a groove 9 disposed along the first edge and a tongue 10 disposed along the second edge of the structural profile, the tongue configured to be disposed in a groove of a second reusable structural profile to join the reusable structural profile and the second reusable structural profile together, and the groove configured to receive a tongue of a third reusable structural profile to join the reusable structural profile and the third reusable structural profile together.
Regarding claim 3, Collar in view of Carlson discloses that the interfacial layer 11 is configured to contact concrete while concrete is poured and sets.
Regarding claim 4, Collar in view of Carlson does not disclose that the interfacial layer 11 is resistant to: alkaline pH conditions; elevated temperatures; water or other liquid absorption; and abrasion by any of sand and aggregate.
It would have been obvious to one having ordinary skill in the art at the time of invention to use material resistant to: alkaline pH conditions; elevated temperatures; water or other liquid absorption; and abrasion by any of sand and aggregate, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 7, Collar in view of Carlson discloses that each of the fasteners (Carlson 4416) is a female fastener that includes a recess (Carlson 4416) into a corresponding support beam of the plurality of support beams.
Regarding claims 10 and 16, Collar discloses an extruded structural profile 1 for casting concrete, comprising: a length, a width, and a thickness; a first side 5 and a second side 6 opposite the first side, the first and second sides defining the width and the length; a first edge 3 and a second edge 4 opposite the first edge, each of the first and second edges extending between the first and second sides and defining the thickness; a plurality of support beams 8, each support beam extending between the first side and the second side; and a groove 9 disposed along the first edge and a tongue 10 disposed along the second edge, the tongue 10 configured to be disposed in a groove 9 of a second extruded structural profile to join the extruded structural profile and the second extruded structural profile together, and the groove 9 configured to receive a tongue 10 of a third extruded structural profile to join the extruded structural profile and the third extruded structural profile together. See Fig. 4b of at least two structural profiles connected to each other.
Collar does not disclose a fastener disposed at a first end of each of the plurality of support beams; the fastener adapted to help secure an interfacial layer to the extruded structural profile.
Carlson in Fig. 45B discloses a structural profile 4500 comprising a fastener 4416 disposed at a first end of each of a plurality of support beams (members forming 4420); the fastener adapted to help secure an interfacial layer to the extruded structural profile.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the structural profile of Collar to have a fastener disposed at a first end of each of the plurality of support beams; a fastener disposed at a first end of each of the plurality of support beams; the fastener adapted to help secure an interfacial layer to the extruded structural profile as taught in Carlson with a reasonable expectation of success because the fastener with the interfacial layer would improve rigidity of the structural profile and its bond with the interfacial layer. Moreover, the method step of claim 16 would be necessarily be performed in assembling the structure of claim 10.
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Collar in view of Carlson as applied to claim 10 above, and further in view of U.S. Patent No. 5,535,565 to Majnaric et al. (“Majnaric”).
Regarding claims 5 and 6, Collar in view of Carlson does not disclose that each of the fasteners is a male fastener that extends from a corresponding support beam of the plurality of support beams and the male fastener comprises a pair of protrusions surrounded by a portion of the interfacial layer.
Majnaric in Fig. 14 discloses an extruded structural profile 90 wherein each of the fasteners is a male fastener (unlabeled make fasteners embedded in 92) that extends from a corresponding support beam 24 of the plurality of support beams, the male fastener extending beyond the first side and surrounded by a portion of an interfacial layer 92.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the structural profile of Collar to have each of the fasteners be a male fastener that extends from a corresponding support beam of the plurality of support beams as taught in Mainaric with a reasonable expectation of success because it would would provide improved bonding between two adjacent layers. Moreover, It has been held that a mere duplication of parts, such as the duplication of the male fastener, has no patentable significance unless a new and unexpected result is produced. A duplication of parts is generally recognized as being within the level of ordinary skill in the art. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1955).
Claim(s) 9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Collar in view of Carlson as applied to claim 1 above, and further in view of U.S. Patent No. 5,792,552 to Langkamp et al. (“Langkamp”).
Regarding claims 9 and 20, Collar in view of Carlson discloses one or more open volumes, each of the one or more open volumes 7 bounded by the first side or the second side, and at least one of the plurality of support beams 8; but does not disclose a filler disposed in the one or more open volumes.
Langkamp discloses a structural profile comprising a filler 2 disposed in one or more open volumes. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the structural profile of Collar to have a filler disposed in the one or more open volumes as taught in Langkamp with a reasonable expectation of success because it would provide added rigidity to the profile while being relatively light weight.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Collar in view of Carlson as applied to claim 10 above, and further in view of U.S. Patent No. 5,535,565 to Majnaric et al. (“Majnaric”) and U.S. Publication No. 2005/0221057 to Hollis et al. (“Hollis”).
Regarding claims 13-15, Collar in view of Carlson does not disclose that each of the fasteners is a male fastener that extends from a corresponding support beam of the plurality of support beams, the male fastener extending beyond the first side wherein the male fastener includes first and second protrusions each extending beyond the first side and wherein each of the first and second protrusions extends outward from the first side at an angle between approximately 15 degrees and approximately 45 degrees.
Majnaric in Fig. 14 discloses an extruded structural profile 90 wherein each of the fasteners is a male fastener (unlabeled make fasteners embedded in 92) that extends from a corresponding support beam 24 of the plurality of support beams, the male fastener extending beyond the first side.
Hollis et al. discloses a structure in Fig. 5 wherein first and second protrusions (upwardly extending member with left and right extrusions) extend outwardly at an angle between approximately 15 degrees and approximately 45 degrees.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the structural profile of Collar to have each of the fasteners is a male fastener that extends from a corresponding support beam of the plurality of support beams, the male fastener extending beyond the first side wherein the male fastener includes first and second protrusions each extending beyond the first side and wherein each of the first and second protrusions extends outward from the first side at an angle between approximately 15 degrees and approximately 45 degrees as taught in Mainaric and Hollis with a reasonable expectation of success because it would would provide improved bonding between two adjacent layers.
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 1-5,7-13, and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,264,489. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the pending claims is recited in the patented claims and thus within the scope of the patented claims.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-10, and 12-23 of copending Application No. 19/282774 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each element of claims 1-20 are recited in and thus within the scope of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 11, 12, and 17-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: None of the prior art, alone or in obvious combination absent hindsight, discloses applicant’s invention of an extruded structural profile structured as required by claim 10 and wherein the extruded structural profile is formed of a metal. In particular, Collar teaches away from and disparages the use of metal (Collar par 003-006). Collar’s invention specifically sought to utilize fiber reinforced thermoplastics to facilitate handling, and transport of temporary forms. See also pages 8-9 of applicant’s remarks dated 11/01/24 in parent application 18/737941.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINE T CAJILIG/Primary Examiner, Art Unit 3633
Prosecution Insights