DETAILED ACTION
This is a final Office Action on the merits for U.S. App. 19/388,862. Receipt of the amendments and arguments filed on 07/23/2026 is acknowledged.
Claims 10-30 are pending.
Claims 1-9 are cancelled.
Claims 10-30 are examined.
Claim Objections
Claim 20 is objected to because of the following informalities: The claim amendments to claim 20 fail to include each and every limitation of previous claim 20 and how such limitations are removed or added. The clause of “a device for use at a gap. . .” that was present in the originally filed claims of 11/13/2025 are not included in the present set of claims and one of ordinary skill in the art would not know whether such limitations are still required or are removed. For examining purposes, such limitations are considered removed. 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.
Claim 24 is 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.
Claim 24 defines “the slot includes an upper surface and a lower surface,” which renders the claimed invention indefinite since upper and lower surfaces have already been defined in claim 20, from which claim 24 depends from, and thus one of ordinary skill in the art would not know whether a second set of upper and lower surfaces is required or whether such limitations are duplicates of those added to claim 20. For examining purposes and in light of the specification and drawings, claim 24 is considered to include duplicate upper and lower surfaces which refer back to the surfaces as defined in claim 20.
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) 10-16 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Baumann (U.S. Patent 5,606,839) in view of Wu (CN 111236540).
Regarding claim 10, Baumann discloses a splice device (#32) for coupling a first concrete slab to a second concrete slab across a gap (see figure 7, where the device #32 is configured to couple two slabs to one another across a gap, where such slabs and a gap are not positively defined), the splice device comprising:
a cylindrical housing (#32) having a longitudinal axis (the x-axis of figure 3) and defining an internal chamber (#36);
a threaded end portion (#34) at a first end of the housing (the left end of figure 3), the threaded end portion including internal threads (the internal threads at #34) configured for threaded engagement with a first reinforcing bar having corresponding external threads (see figures 3 and 7, where a threaded rebar #18 is configured to thread to such an end);
an open end portion (#38) at a second end of the housing (the right end of figure 3) opposite the threaded end portion, the open end portion defining a slot opening (the opening between the top and bottom flanges of the second right end #38 of figure 3);
at least one port (#40) extending through a wall of the housing and communicating with the internal chamber (see figure 3);
wherein the internal chamber is configured to receive a portion of the second reinforcing bar through the slot opening while maintaining a first gap distance between an end of the second reinforcing bar and the threaded end portion to accommodate thermal expansion movement (see figure 3); and
wherein the internal chamber is configured to be filled with curable fill material through the at least one portion after thermal movement has stabilized (see figure 7 at #50).
However, Baumann does not disclose the slot opening has a width that exceeds the height to permit both lateral and axial displacement of the second rebar therein such that the slot opening includes an upper surface and a lower surface configured to contact an outer surface of the second reinforcing bar as defined. It is highly well known in the art, as evidenced by Wu, that the bores #10 and #13 at the end of a splice device can comprise of circular openings, as depicted at #13, or rectangular slots, as depicted in figure 13 at #10, in order to allow for deviations in the positioning of the rebar and the connection between adjacent rebar elements. See figures 2 and 13. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the second, open end slot of Baumann to comprise of a rectangular slot, as taught in Wu, in order to allow for specific movement and connection of rebar which may be misaligned with one another during installation and also since it has been held that changing the shape of an object is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed bore was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Thus, such a slot opening of Baumann in view of Wu would comprise of upper and lower horizontal surfaces which are each configured to contact an outer surface of a second reinforcing bar and permit supporting and movement of such a second reinforcing bar, where such a configuration does not require the upper and lower surface to contact the outer surface of the second rebar at the same time.
Regarding claim 11, Baumann in view of Wu render obvious the internal chamber has a longitudinal length configured to maintain the first gap distance of between one inch and four inches when the second reinforcing bar is fully inserted through the slot opening (such a gap is not positively defined, where the internal chamber and device of Baumann is configured to receive rebar within the slot opening and maintain a gap between two slabs, which the device is embedded within and connected to, as defined).
Regarding claim 12, Baumann in view of Wu render obvious the height of the slot opening is between a diameter of the second reinforcing bar and double the diameter of the second reinforcing bar (paragraph 51 of the English translation of Wu discloses the height K can be 1.05 to 1.2 times the diameter D1 of the rebar received therein, where such features would be provided within the invention of Baumann as explained above).
Regarding claim 13, Baumann in view of Wu render obvious the width of the slot opening is at least 1.5 times greater than the height to permit lateral displacement of at least one-quarter inch in each lateral direction perpendicular to the longitudinal axis (paragraph 51 of the English translation of Wu discloses the width G of the slot can be the sum of the diameter of the rebar and a preset deviation, which deviation is 8 to 12 mm (which is at greater than 0.25 inches), where figure 13 depicts the width G is to be greater than the heigh K. Though Wu does not specifically disclose the width is at least 1.5 times greater than the height, it would have been obvious before the effective filing date of the claimed invention to have made the width at least 1.5 times greater than the height of the slot within Baumann in view of Wu in order to increase the offset distance which the device can receive a mis-positioned second rebar element and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).).
Regarding claim 14, Baumann in view of Wu render obvious the slot opening is rectangular with arcuate ends shaped to correspond to a cross-sectional profile of the second reinforcing bar (Though Wu does not specifically disclose the ends of the rectangular shaped slot are arcuate in figure 13, paragraph 59 of the English translation disclose that any changes in shape, structure or material selection can be done and achieve the same or similar technical solution as the invention, where one of ordinary skill in the art could form arcuate ends for such a rectangular shape yet still allow a rebar to fit and slide within the bore as needed in order to attach the rebar to the sleeve. Therefore, it would have been obvious before the effective filing date of the claimed invention to have rounded the ends of the rectangular slot of Baumann in view of Wu in order to better conform the ends of the slot to the shape of the cylindrical rebar received therein and also since it has been held that changing the shape of an object is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed bore was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).).
Regarding claim 15, Baumann in view of Wu render obvious the at least one port comprises an inlet (the left port #40 of figure 3 of Baumann) and an outlet (the right port #40 of figure 3 of Baumann) positioned on a same side of the housing (see figure 3 of Baumann) to facilitate filling of the internal chamber with the curable fill material and venting of air from the internal chamber (see figure 7 of Baumann).
Regarding claim 16, Baumann in view of Wu render obvious the internal chamber includes a plurality of axially spaced annular ridges extending inwardly from an interior surface of the housing, the ridges being configured to increase surface area for boding with the curable fill material and the second reinforcing bar (figure 3 of Baumann depicts annular ridges that are spaced axially from one another within the chamber #36 in order to reduce the width of such a chamber at such locations and increase the filler material connection strength within the chamber).
Regarding claim 19, Baumann in view of Wu render obvious the internal chamber has a volume configured to receive the second reinforcing bar while retaining sufficient space for the curable fill material to surround and bond to both the second reinforcing bar and internal surfaces of the chamber after thermal movement has stabilized (see figure 7 of Baumann).
Regarding claim 20, Baumann discloses a splice device (#32) for use at a gap between adjacent concrete slabs (see figure 7, where the device #32 is configured to coupled two slabs to one another across a gap, where such slabs and a gap are not positively defined), the splice device comprising:
a body (#32) extending along a first longitudinal axis (the x-axis of figure 3) between a first end (the left end of figure 3) and a second end (the right end of figure 3), the body defining:
a first opening (#34) including a first bore at the first end (see figure 3), the first bore being configured to receive a first rebar of a first concrete slab (see figures 3 and 7);
a second opening (#38) including a second bore at the second end (the right end of figure 3), wherein the second bore comprises a slot (the slot opening between the top and bottom flanges of the second right end #38 of figure 3) configured to receive a second rebar of a second concrete slab (see figure 7);
an inlet (the left port #40 of figure 3) disposed along a second longitudinal axis (the vertical axis which the left inlet #40 is open along in figure 3), the second longitudinal axis extending in a first direction substantially perpendicular to the first longitudinal axis (see figure 3);
an outlet (the right port #40 of figure 3) disposed along a third longitudinal axis (the vertical axis which the outlet #40 extends along), the third longitudinal axis extending a second direction substantially perpendicular to the first longitudinal axis (see figure 3); and
a cavity (#36) extending along the first longitudinal axis, the cavity in fluid communication with the first opening, the second opening, the inlet, and the outlet (see figure 3),
wherein the cavity is configured to accommodate axial movement of the second rebar toward and away from the first end (see figure 7, where the rebar is received within the cavity from the second end and configured to move toward or away from the first end during use).
However, Baumann does not disclose the slot opening has a width that is greater than a height to permit lateral movement of the second rebar therein so that the slot includes an upper surface and a lower surface configured to contact an outer surface of the second rebar to permit movement and support of such a second rebar as defined. It is highly well known in the art, as evidenced by Wu, that the bores #10 and #13 at the end of a splice device can comprise of circular openings, as depicted at #13, or rectangular slots, as depicted in figure 13 at #10, in order to allow for deviations in the positioning of the rebar and the connection between adjacent rebar elements. See figures 2 and 13. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the second bore of Baumann to comprise of a rectangular slot, as taught in Wu, in order to allow for specific movement and connection of rebar which may be misaligned with one another during assembly and also since it has been held that changing the shape of an object is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed bore was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Thus, such a slot of Baumann in view of Wu would comprise of upper and lower horizontal surfaces which are each configured to contact an outer surface of a second rebar and permit supporting and movement of such a second rebar, where such a configuration does not require the upper and lower surface to contact the outer surface of the second rebar at the same time.
Regarding claim 21, Baumann in view of Wu render obvious the first bore includes one or more threads on an inner surface configured to engage corresponding threads on the first rebar to fixedly connect the splice device to the first rebar (see figure 3 of Baumann, where the first end #34 comprises of internal threads to connect to a threaded rebar end).
Regarding claim 22, Baumann in view of Wu render obvious the slot has a height that is between a diameter of the second rebar and double the diameter of the second rebar (the paragraph 51 of the English translation of Wu discloses the height K can be 1.05 to 1.2 times the diameter D1 of the rebar received therein, where such features would be provided within the invention of Baumann as explained above).
Regarding claim 23, Baumann in view of Wu render obvious the slot is rectangular in geometry with arcuate ends shaped to correspond to a cross-sectional profile of the second rebar (Though Wu does not specifically disclose the ends of the rectangular shaped slot are arcuate in figure 13, paragraph 59 of the English translation discloses that any changes in shape, structure, or material selection can be done and achieve the same or similar technical solution as the invention, where one of ordinary skill in the art could form arcuate ends for such a rectangular shape yet still allow a rebar to fit and slide within the bore as needed in order to attach the rebar to the sleeve. Therefore, it would have been obvious before the effective filing date of the claimed invention to have rounded the ends of the rectangular slot of Baumann in view of Wu in order to better conform the ends of the slot to the shape of the cylindrical rebar received therein and also since it has been held that changing the shape of an object is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed bore was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).).
Regarding claim 24, Baumann in view of Wu render obvious the slot includes an upper surface and a lower surface, each configured to contact an outer surface of the second rebar and provide sufficient strength to support the second concrete slab (figure 3 of Baumann depicts the second opening slot is formed by top and bottom flanges extending inwardly from the perimeter of the housing body #32 and thus would comprise of upper and lower surfaces that are flat for contacting a formwork panel and being coplanar with an outer surface of the concrete slab and to also contact an outer surface of the second rebar, such as through the filler material #50).
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Baumann in view of Wu and Danterr (Danterr, Construction Debonding Foam, https://www.danterr.com/products/reinforcing/accessories/debonding-foam/ (Apr. 16, 2021), obtained from https://web.archive.org/web/20210416121530/https://www.danterr.com/products/reinforcing/accessories/debonding-foam/).
Regarding claim 17, Baumann in view of Wu render obvious the claimed invention except for a debonding sleeve configured to be positioned over a portion of the second reinforcing bar adjacent the slot opening. However, it is highly well known in the art, as evidenced by Danterr, that foam debonding sleeves are highly well known and used in the art in order to cover rebar and debond such elements from the concrete they are to be embedded within in order to form controlled movement joints and expansion joints within construction projects. Therefore, it would have been obvious before the effective filing date of the claimed invention to have included a debonding sleeve within the assembly of Baumann so as to be configured for use on the second rebar, as taught in Danterr, in order to form controlled movement joints between such slabs during use.
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Baumann in view of Wu and Zeng et al. (CN 108252458).
Regarding claim 18, Baumann in view of Wu render the claimed invention obvious except for the open end portion includes an external flange extending radially outward from the housing and configured to abut against a side surface of the first concrete slab. However, it is highly well known in the art, as evidenced by Zeng et al., that the right, open end portion of a sleeve body #23 opposite to a threaded end #22 can be constructed with a flange portion that extends outwardly from the outer surfaces of the body to form a surface which is configured to be placed against a formwork or flush with a concrete slab as needed. See figure 4. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the open end portion of the body of Baumann to comprise of an outwardly extending flange, as taught in Zeng et al., in order to increase the surface area at such an end so as to provide a larger area to abut a formwork panel as needed.
Claim(s) 25 is rejected under 35 U.S.C. 103 as being unpatentable over Baumann in view of Wu, Heong et al. (JP 2014051798), and Jeong et al. (KR 10-20150031813).
Regarding claim 25, Baumann in view of Wu render obvious the claimed invention except for the body is formed of stainless steel and includes a coating material on an exterior surface to resist corrosion. However, it is highly well known in the art, as evidenced by Hongo et al., that such rebar splice devices can be constructed from stainless steel in order to resist corrosion during use. See the first paragraph of claim 3 of the English translation. Furthermore, it is highly well known in the art, as evidenced by Jeong et al., that such stainless steel materials to be embedded within concrete can be coated with an epoxy resin in order to provide corrosion resistance. See the middle of page 4 of the English translation. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the splice device of Baumann to comprise of stainless steel coated with an epoxy resin corrosion resistant coating, as taught in Hongo et al. and Jeong et al., in order to provide a durable splice device resistant to corrosion and also 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, 125 USPQ 416 (CCPA 1960).
Claim(s) 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Baumann in view of Wu and Dayton (Dayton Superior, D410 Sleeve-Lock Grout Sleeve Technical Data Sheet, https://www.daytonsuperior.com/docs/default-source/tech-data-sheets/d410sleeve-lockgroutsleevetds.pdf?sfvrsn=5498af60_26 (04/04/2023)).
Regarding claim 26, Baumann in view of Wu render the claimed invention obvious except for the body has a length along the first longitudinal axis of between about one foot and about three feet. However, it is highly well known in the art, as evidenced by Dayton, that the length and size of such sleeves is dependent upon the size of the rebar to be spliced and the building codes to be met, where #10 rebar would require a sleeve length of 18 inches for proper embedment of each rebar. See the Technical Data table on page 1. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the body of Baumann to comprise of a length between 1 foot and 3 feet, as taught in Dayton, in order to properly splice and embed rebar of a specific size and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 27, Baumann in view of Wu and Dayton render obvious the body has a length of about 18 inches (Dayton discloses that the length and size of such sleeves is dependent upon the size of the rebar to be spliced and the building codes to be met, where #10 rebar would require a sleeve length of 18 inches for proper embedment of each rebar (See the Technical Data table on page 1). Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the body of Baumann to comprise of a length of 18 inches, as taught in Dayton, in order to properly splice and embed rebar of a specific size and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).).
Regarding claim 28, Baumann in view of Wu render obvious the claimed invention except specifically for the body has an outer diameter of between about 2 inches and about five inches, and wherein the cavity has an inner diameter of between about 1.5 inches and about 4 inches. However, it is highly well known in the art, as evidenced by Dayton, that the length and size of a rebar splice sleeve is dependent upon the size of the rebar to be spliced and the building codes to be met, where #10 rebar requires an outer diameter A of 3.04 inches and a cavity inner diameter of 2.16 inches where the ridges are provided. See the Technical data table on page 1. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the outer and inner diameters of the body of Baumann to fall within the ranges as defined, as taught in Dayton, in order to properly splice and embed rebar of a specific size and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).).
Regarding claim 29, Baumann in view of Wu render obvious the claimed invention except specifically for the body has an outer diameter of between about 3 inches and about 3.5 inches, and wherein the cavity has an inner diameter of between about 2 inches and about 3 inches. However, it is highly well known in the art, as evidenced by Dayton, that the length and size of a rebar splice sleeve is dependent upon the size of the rebar to be spliced and the building codes to be met, where #10 rebar requires an outer diameter A of 3.04 inches and a cavity inner diameter of 2.16 inches where the ridges are provided. See the Technical data table on page 1. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the outer and inner diameters of the body of Baumann to fall within the ranges as defined, as taught in Dayton, in order to properly splice and embed rebar of a specific size and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).).
Claim(s) 30 is rejected under 35 U.S.C. 103 as being unpatentable over Baumann in view of Wu and Kies et al. (U.S. Publication 2005/0169701).
Regarding claim 30, Baumann in view of Wu render the claimed invention obvious except for the thickness of the body between the cavity and an exterior surface of the body is between about 0.3 inches and about 0.8 inches. However, it is highly well known in the art, as evidenced by Kies et al., that such a wall thickness of a body of a rebar splice device between the cavity and the outer perimeter thereof is about ½ of the diameter of the rebar #12 and #14 spliced therewith. See paragraph 53. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the wall thickness of the body of Baumann to be between 0.3 inches and about 0.8 inches, such as by constructing the wall to be half of the diameter of #7-#10 rebar as taught in Kies et al., in order to construct the sleeve to accommodate rebar of a specific diameter and strength for each respective use of the splice device and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).).
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 10-16 and 18-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, 12, 23, and 24 of copending Application No. 18/658,123 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 10 of the present application is defined in claim 4 of U.S. App. ‘123.
Claim 11 of the present application is defined in claim 4 of U.S. App. ‘123, where such use limitations of present claim 11 do not add any further structure to the accommodate such a gap and the device of U.S. App. ‘123 is configured to so function.
Claim 12 of the present application is defined in claim 4 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes.
Claim 13 of the present application is defined in claim 4 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes.
Claim 14 of the present application is defined in claim 4 of U.S. App. ‘123 in view of claim 6 of U.S. App. ‘123.
Claim 15 of the present application is defined in claim 4 of U.S. App. ‘123.
Claim 16 of the present application is defined in claim 4 of U.S. App. ‘123, in view of claim 23 of U.S. App. ‘123.
Claim 18 of the present application is defined in claim 4 of U.S. App. ‘123, in view of claim 24 of U.S. App. ‘123.
Claim 19 of the present application is defined in claim 4 of U.S. App. ‘123.
Claim 20 of the present application is defined in claim 1 of U.S. App. ‘123, where the function of the cavity of present claim 20 as being configured to accommodate axial movement of a second rebar as defined does not add any further structure and where the cavity of U.S. App. ‘123 is configured to function in a similar manner.
Claim 21 of the present application is defined in claim 2 of U.S. App. ‘123.
Claim 22 of the present application is defined in claim 1 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes and allow for specific displacements and tolerances of rebar placement.
Claim 23 of the present application is defined in claim 6 of U.S. App. ‘123.
Claim 24 of the present application is defined in claim 1 of U.S. App. ‘123.
Claim 25 of the present application is defined in claim 12 of U.S. App. ‘123 in view of claim 15.
Claim 26 of the present application is defined in claim 1 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes.
Claim 27 of the present application is defined in claim 1 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes.
Claim 28 of the present application is defined in claim 1 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes.
Claim 29 of the present application is defined in claim 1 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes.
Claim 30 of the present application is defined in claim 1 of U.S. App. ‘123 in view of In Gardner v. TEC Systems, Inc. for an obvious change in size to accommodate rebar of specific sizes.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/658,123 in view of Danterr. Claim 17 of the present application is defined in claim 4 of U.S. App. ‘123, except for the debonding sleeve as defined; however, Danterr teaches the obviousness of using debonding foam sleeves over rebar in order to allow for movement of the rebar within the slabs to allow for better transfer of forces therein.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 07/23/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that “the function of Wu’s slot is dimensional alignment at assembly” and “does not disclose upper and lower surfaces that structurally bear against the outer surface of a rebar to support the weight of the splice device and the concrete slab formed around it,” the limitations of claims 10 and 20 only define that the slot opening include upper and lower surfaces and each surface is “configured to contact an outer surface of the second reinforcing bar.” Such limitations do not positively define that both of such upper and lower surfaces must contact the outer surface of the second rebar at the same time or that such a contact is positively required. Since the rectangular slot opening of Wu comprises of upper and lower horizontal surfaces and each of such surfaces is configured to contact the second rebar at some point during installation, such as due to tolerances, and allow movement of the second rebar therein and support of the rebar thereon, Wu is considered to meet such limitations as broadly defined. The rejections are thus considered proper and are upheld.
Regarding Applicant’s arguments that the mapping of the rejection of claim 24 is insufficient, claim 24 includes the same limitations as added to claim 20, where, as explained above, such a contact of the second rebar with the upper and lower surfaces of the slot is not positively defined and where the slot opening of Baumann in view of Wu is so configured as defined.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Baumann’s device is installed into pre-formed expansion joints between finished slabs and is never self-supporting on a rebar during a concrete casting and curing process) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Here, the claims are directed towards a splice device product and not an assembly or process of using such a splice device in such a manner as argued by Applicant. The splice device of the prior art is configured to function in such a manner as defined, where a second rebar can be supported either directly or indirectly, such as through grout, against the upper and lower surfaces of the splice device and thus meets such configured to language as broadly defined.
Regarding Applicant’s arguments that the shape of the slot is not a mere shape change, as taught in Baumann and Wu, whether the slot is round or rectangular, the rebar that is received therein is still allowed to move within the slot due to misalignment of the concrete slabs to be connected with the device, where the shape determines the amount of movement and tolerances for misalignment. One of ordinary skill in the art would understand the size differences and tolerance changes between the different shapes and thus choose a shape based on the required tolerances as needed by the end user. The rejections are thus considered proper and are upheld.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argues that Baumann does not teach the upper and lower surfaces as defined, where such features, along with the width and height of such a slot, were the reason for the 103 rejection as presently and previously provided.
Applicant’s arguments with respect to the rejections of claims 17, 18, and 25-30 using additional secondary references are based on the limitations and alleged allowability of the independent claims from which they depend from. Since the independent claim rejections are considered proper, the rejections of claims 17, 18, and 25-30 and the modifications taken therein are also considered proper.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE V ADAMOS whose telephone number is (571)270-1166. The examiner can normally be reached Monday - Friday 9-5.
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635
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