DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 12,180,706 B2 (hereafter the ‘706 patent and equivalent) addressing the filing 05 June 2025.
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 .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 12,180,706, which issued from App. No. 18/500,698 having a filing date of 02 November 2023. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘698 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the file indicates no maintenance fees are due at this time. The next fee has a 3.5-year window opening 31 December 2027. The window with surcharge opens 01 July 2028, and the last day to pay the fee with surcharge is 02 January 2029.
Information Disclosure Statement (IDS)
It is noted that an IDS has not been filed with the instant application that contains all the references listed in the issued patent. The absence of a list of these references could result in a reissue patent’s issuing without all the prior art documents listed on the original patent. Should applicant want any prior art documents listed in any resulting reissue, then applicant must submit an IDS listing the respective art unless the respective art is listed on an attached form PTO-892. See MPEP 1406.
Amendments to the Specification
The Amendments to the Specification are entered.
Objection to the Specification:
Review of the written description indicates reference characters for “nodes” which appear throughout the claims. The specification should be amended to include a reference character(s) for the various node(s).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s): reference characters are not provided for “node(s)” which are throughout the claims. Further, Figs. 4, 5B, 6A-6G, 7B-8B and 11 have shaded regions which do not clearly reproduce so that the invention can be clearly viewed (see e.g., Fig. 6G: proximate 10a and 60). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Reissue Oath/Declaration
The following is a quotation of 35 USC §251, which forms the basis for issues under this heading:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
The reissue Oath/Declaration filed 05 June 2025, is defective for the following (see 37 CFR §1.175 and MPEP §1414):
Applicant notes this is a broadening reissue. For a broadening reissue, see MPEP 1414, a portion of which is reproduced below:
For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid (emphasis added).
In the Reissue Oath, applicant did not provide the single word, phrase or expression as required.
Applicant must provide a new Oath/Declaration addressing the above noted issues. Further, applicant should respectfully note that if a specification will not be included in the subsequent Oath/Declaration, the box “is attached hereto” should not be checked, but rather applicant should check the box stating “was filed on _________”.
As a result of the defective Oath/Declaration, claims 1-12 stand rejected under 35 USC §251 as set forth above. See 37 CFR §1.175.
Claim Objections/Claim Rejections under 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 objected to and/or rejected under 35 USC 112(b) because of the following informalities. Appropriate correction is required.
The examiner notes numerous issues with respect to the claims. Many of the limitations lack antecedent basis (e.g., “a”, “an”, “a plurality of”, etc.). When the same limitation is later referenced, numerous instances arise where “the” or “said”, which denotes antecedent basis has been provided, is missing (e.g., “each horizontal element” as opposed to “each of the horizontal elements” or equivalent). Further, numerous limitations contain language such as “at least one” (e.g., “at least one [element]” per claim 1); however, later references to the same limitation refers to “the [element]”); this is indefinite as more than one [element] can be present based on the base claim language. The claims were provided a cursory review and addresses the issues accordingly; however, not all instances were addressed of repeat matters.
Further, the claims in general lack overall clear language that does not particularly point out and distinctly claim the subject matter as required under 37 CFR 1.75. The claims appear to be taken from a foreign translation, as the claims in general do not read in accordance with patent practice (see e.g., the substantive lack of antecedent basis). Further, the claims in general lack a clear interrelation of parts
Below is a reproduction of the claims with the examiner’s comments in bold italics. The examiner may not address each instance of repetitive issues (e.g., lack of antecedent basis) for brevity.
Claim 1: (Amended) A structural system comprising engineered wood components (lacks antecedent basis, see comment below), the structural system comprising:
at least one vertical structural element with several structural nodes (indefinite as to the metes and bounds of what constitutes a “node” as claimed and if several nodes are associated with one element, or one element per vertical structural element) located on different vertical positions (indefinite as written if “different vertical position” is with respect to the vertical structural element, or with respect to each node), corresponding to different floor levels (lacks antecedent basis; indefinite as to the metes and bounds of “corresponding” and to what it references, such as the noted or vertical structural elements); and
engineered wood components (lacks a clear antecedent basis when read with the same term in the preamble), wherein the engineered wood components comprise:
multiple horizontal structural elements (lacks antecedent basis, further, the metes and bounds of what constitutes “multiple” in light of the claim as written cannot be determined), each horizontal structural element (lacks antecedent basis) comprised of an upper horizontal board and a lower horizontal board facing each other, separated to each other (“separated to each other…” is unclear as to the intent of this limitation) in a vertical direction and rigidly connected to each other through spacers (lacks antecedent basis) positioned between said upper and lower horizontal boards;
wherein the multiple horizontal structural elements of a same floor level are comprised of laterally adjacent slabs (lacks antecedent basis; indefinite as written as to whether the slabs are the same as the upper and lower horizontal boards or if they are different from the boards which form the horizontal structural elements)) connected to each other through a perimetral region of the upper horizontal board of a first said laterally adjacent slab adhered to a perimetral region of the upper horizontal board of a second said laterally adjacent slab such that the upper horizontal boards of the laterally adjacent slabs are directly connected to one another, through complementary staggered steps (lacks antecedent basis; indefinite as written as to the metes and bounds of what constitutes “complementary” and how this forms the connection) or through a joint connector adhered (indefinite as to whether only the joint connector would be adhered or either the joint connector/staggard steps would be adhered) on the perimetral regions of the upper horizontal boards connected to each other, to transfer horizontal loads between the upper horizontal boards of adjacent said horizontal structural elements.
Claim 3: The engineered wood structural system according to claim 1, wherein:
the slabs are post-stressed slabs including multiple slab post-stressed cables (lacks antecedent basis) parallel to each other or disposed in two crossed directions; or
the slabs are multiple aligned consecutive post-stressed slabs including multiple (“multiple” is indefinite for reasons previously provided) continuous slab post-stressed cables parallel to each other or disposed in two crossed directions (indefinite as this limitation has already been provided, so it is unclear if this is the same or different limitation), one or multiple (“multiple” is indefinite for reasons previously provided) of said slab post-stressed cables passing along all said consecutive slabs (“along” is indefinite as written as to how it interrelated with respect to “passing” of the cables).
Claim 4: The engineered wood structural system according to claim 1, wherein the spacers include at least one of:
one or several central vertical boards or several central vertical boards (“several central vertical boards” is redundant) arranged in orthogonal directions,
a rigid foam rigidly connecting the upper and lower horizontal boards, several piled horizontal boards (“several piled horizontal boards” is indefinite as written as it is unclear how it interrelates with the other limitations, and “piled” as written is unclear with respect to the boards),
several piled horizontal boards (lacks antecedent basis, and this limitation has already been provided) with oriented fibers parallel to each other, or
several piled horizontal boards (lacks antecedent basis and this limitation has already been provided) with oriented fibers distributed in perpendicular directions in successive board (“directions in successive board” is unclear as lacking antecedent basis, and unclear as to intent grammatically as written).
Claim 5: The engineered wood structural system according to claim 1, wherein the engineered wood elements connected to each other have a tolerance gap between them filled with hardened adhesive (lacks antecedent basis), or a tolerance gap of up to 25 mm (0.984 in) between the engineered wood elements (this language appears redundant, because as written “a tolerance gap” is within the same range of “a tolerance gap of up to 25 mm”) connected to each other filled with hardened adhesive (this limitation has already been provided) when no shear loads are transmitted through said hardened adhesive, or a tolerance gap (this limitation has already been presented) of up to 1 mm (0.039 in) (indefinite for reasons previously provided) between the engineered wood elements connected to each other filled with hardened adhesive (lacks antecedent basis) when shear loads are transmitted through said hardened adhesive (indefinite as to which hardened adhesive is being referenced).
Claim 6: The engineered wood structural system according to claim 1, wherein the horizontal structural elements of the same floor level are spaced apart by a gap distance and the gap distance is covered by one or several slab segments supported on the horizontal structural elements (this is indefinite as written, as it is unclear from previously language if the slab and horizontal structural elements are the same limitation; the examiner references e.g., Fig. 7A for clarity, though not reading limitations into the claim) surrounding said gap distance, each slab segment (lacks antecedent basis) including an upper horizontal board (this limitation has already been provided) and a lower horizontal board (this limitation has already been provided) facing each other, separated to each other (“separated to each other” is indefinite as it is unclear how something can be separated “to” another item) in a vertical direction and rigidly connected to each other through additional spacers (indefinite as claimed; lacks antecedent basis and unclear if these are the same or different spacers previously claimed) comprised between the upper and lower horizontal boards of a respective said slab segment.
Claim 7: The engineered wood structural system according to claim 6, wherein a perimetral region of the upper horizontal board (indefinite as “a perimetral region…” has already been claimed) of the respective slab segment is adhered to at least one of the upper horizontal board of surrounding said horizontal structural elements or to the upper horizontal board of an adjacent slab segment, the adhesion being produced directly, through complementary staggered steps (this limitation has already been provided) or through a joint connector (this limitation has already been provided) adhered to two adjacent portions of the upper horizontal board in a connection area adjacent to an edge between two adjacent slab segments connected to each other to transfer horizontal traction loads (“or through a joint connector….horizontal traction loads” is indefinite as written as the metes and bounds of this language cannot be determined ).
Claim 9: The engineered wood structural system according to claim 1, wherein the vertical structural element (indefinite as written as “at least one…” is initially claimed, so it is unclear what is being referenced) includes, on each structural node (lacks antecedent basis), at least one first seat and wherein at least one horizontal structural element (lacks antecedent basis) supported on each structural node (lacks antecedent basis) includes at least one second seat supported and vertically overlapped on the at least one first seat of the vertical structural element (indefinite for reasons previously provided).
Claim 10: The engineered wood structural system according to claim 9, wherein the second seat is at least one of:
a region, or a reinforced region, of the lower horizontal board, or
a portion, or a reinforced portion, of the spacers non-covered (this language is indefinite as it has not been previously provided) by the lower horizontal board, or
a portion, or a reinforced portion, of the upper board extended in cantilever from rest of (“from rest of…” does not appear to flow grammatically) the horizontal structural elements, and
wherein the second seat is supported on the first seat directly or through an interposed element or an engineered wood, metal or plastic interposed element. The language of this claim is generally indefinite as it provides numerous combinations and the scope of the claims cannot be determined
Claim 11: The engineered wood structural system according to claim 9, wherein, in at least one said structural node the upper and lower horizontal boards of at least one said horizontal structural element connected to said at least one structural node are separated from the vertical structural element by a gap distance, and the first and second seats are configured to reduce or avoid transmission of bending forces (indefinite as written as to how the seats achieve the claimed configuration), defining an articulated joint between at least one horizontal structural element (lacks antecedent basis) and the vertical structural element.
Claim 12: The engineered wood structural system according to claim 9, wherein, in at least one said structural node the upper and lower horizontal boards, of at least one said horizontal structural element connected to said at least one structural node, are respectively in direct contact or connected through hardened adhesives to opposed vertical sides of the vertical structural element, transmitting bending forces to the vertical structural element defining a rigid joint between the at least one horizontal structural element and the vertical structural element (indefinite as written as “at least one” vertical structural element is provided).
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
Allowable Subject Matter
The examiner reserves comment on the allowability of Claims 1-12 pending resolution of the rejections under 35 USC 112(b) above. The examiner cites the following as relevant subject matter:
Perez-Romero et al. (U.S. Publication 2017/0370090 A1) – teaches a joint that incorporates adhesives (paragraph [0083])
Dewson et al. (U.S. Publication 2011/0280649 A1) – teaches a framing system and a joint that has a stair-stepped feature (Fig. 4A, 11B)
Kin (U.S. Publication 2021/0164224 A1) – teaches a structural frame and slab (Fig. 1), and the slabs are directly connected (as shown) with joints connecting the system (Fig. 7)
Falconer (U.S. Patent 3,866,371) – teaches a framing system with stair stepped joints (Fig. 8: 21, 22, 23)
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 12,180,706 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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