Office Action 2: Final Rejection (2024-10-01)
Rejection types: 112 - Written Description/Enablement

CLAIMS:
AMENDMENTS TO THE CLAIMS

1\. (currently amended) A composite floor beam for use in a workpiece structure having at least one floor and at least one ceiling and utilities therein, the composite floor beam comprising an upper part made from a first material comprising wood extending substantially along \[\[the\]\] a length of the beam and a lower part made from a second material comprising metal extending substantially along the length of the beam, wherein the upper part comprises an upper surface and a lower surface, wherein the lower part comprises an upper surface and a lower surface, wherein the upper surface of the upper part is designed to be arranged horizontally to support the workpiece floor above, wherein the upper surface of the upper part is parallel to the lower surface of the lower part, wherein the lower surface of the lower part is designed to be arranged horizontally for attachment to the workpiece ceiling below, wherein at least one of the lower surface of the upper part and the upper surface of the lower part is irregular, and wherein the lower surface of the upper part and the upper surface of the lower part define apertures therebetween for the workpiece utilities, the apertures passing from a first side of the beam to a second side of the beam transverse to \[\[the\]\] a direction of the length of the beam and between \[\[the\]\] ends of the beam.
2\. (currently amended) \[\[A\]\] The composite floor beam according to Claim 1, characterised in that the \[\[the\]\] second material comprises steel.
3\. (currently amended) \[\[A\]\] The composite floor beam according to Claim 1, characterised in that both the lower surface of the upper part is irregular, and the upper surface of the lower part is irregular.
4\. (currently amended) \[\[A\]\] The composite floor beam according to Claim 3, wherein the apertures are defined between the irregular lower surface of the upper part and the irregular upper surface of the lower part.
5\. (currently amended) \[\[A\]\] The composite floor beam according to Claim 3, wherein the lower surface of the upper part is shaped as a wave \[\[like\]\].

6\. (currently amended) \[\[A\]\] The composite floor beam according to Claim 3, wherein a plurality of lowest points on the lower surface of the upper part comprises an upstanding slot running in \[\[the\]\] a direction of \[\[the\]\] a length of the upper part.
7\. (currently amended) \[\[A\]\] The composite floor beam according to \[\[A\]\] The composite floor beam according to
wherein the lower part has a horizontally aligned part and an upstanding member running along at least part of \[\[its\]\] a length of the horizontally aligned part.

8\. (currently amended) \[\[A\]\] The composite floor beam according to claim 7, wherein the upper surface of the upstanding member of the lower part is shaped as a wave \[\[like\]\].
9\. (currently amended) \[\[A\]\] The composite floor beam according to Claim 8, wherein the upstanding member of the lower part engages with \[\[the\]\] an upstanding slot of the upper part.

10\. (currently amended) \[\[A\]\] The composite floor beam according to claim 7, wherein the irregular lower surface of the upper part rests on the horizontally aligned part of the lower part.

11\. (currently amended) \[\[A\]\] The composite floor beam according to claim 10, further comprising tabs depending from the upper part and tabs upstanding from the lower part, wherein the depending tabs of the upper part are fastened-to the upstanding tabs of the lower part.

12\. (currently amended) \[\[A\]\] The composite floor beam according to claim 10, wherein \[\[the\]\] ends of each upper part are identical in cross section.

13\. (canceled)

14\. (previously presented) A floor panel assembly, comprising:a composite floor beam in accordance witha composite floor beam in accordance with
a floor panel to which the upper surface of the upper part is joined.

15\. (currently amended) The floor panel assembly of claim 14, comprising a plurality of support columns-joined to \[\[a\]\] the floor panel.

16\. (previously presented) A method of making a portion of the composite floor beam of claim 1, wherein the method comprises:providing a piece of material, wherein the piece of material is selected from the group consisting of: a cuboid piece of timber and an I-section steel beam, and
cutting the piece of material in a wave form about half way from an upper surface and a lower surface of the piece of material, varying according to the point on the wave form, so as to produce a pair of approximately similar parts, each of the parts being usable as an upper part of the composite floor beam.

17\. (canceled)

18\. (previously presented) The method of Claim 16, wherein the method further comprises cutting at least one slot in a lower surface of the upper part.

19\. (previously presented) The method of Claim 16, wherein the method further comprises arranging an upstanding part of the lower part in the at least one slot in the lower surface of the upper part.

20\. (previously presented) The method of Claim 16, wherein the method further comprises releasably fastening the upper part to the lower part.

21\. (currently amended) The composite floor beam according to Claim 10, wherein \[\[the\]\] ends of each lower part are identical in cross section.

22\. (previously presented) A method of installing a floor assembly, comprising:providing a plurality of support columns and at least one floor panel;
joining a plurality of the composite floor beams of Claim 1 to the support columns; and
joining the at least one floor panel to the upper surface of the upper part of the composite floor beams.

OFFICE ACTION:
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 .
Status of Claims
Claims 1-12, 14-16 and 18-22 are pending and subject to examination in this Office action.  Claims 13 and 17 were previously canceled.
Drawings
Replacement Figures 1-4B are objected to for at least the following reasons:
Figures 1-4B are objected to because the PRIOR ART label should be placed adjacent to or under the respective Figure label (e.g., FIGURE 1 (PRIOR ART), FIGURE 2A (PRIOR ART), etc.); and
Figures 1-4B are further objected to because the character of the lines, numbers, and letters is poor and appears to be very pixelated.
Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
Specification
The abstract of the disclosure filed on 23 September 2024 is objected to because it does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b).  A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
Claim Objections
Regarding claim 14 (1st limitation), it appears that “a composite floor beam in accordance with Claim 1” should be amended as follows: --[[a]] the composite floor beam according to Claim 1--.
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.
Claims 1-12, 14-16 and 18-22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding independent claim 1, the phrases “an upper part made from a first material comprising wood” and “a lower part made from a second material comprising metal” is recited.  Applicant appears to assert that this claim language requires an upper part composed entirely of wood and a lower part composed entirely of steel.  However, the open-ended recitations directed to “a first material comprising” and “a second material comprising” do not exclude additional, unrecited materials.  Accordingly, clarification is requested.
Further regarding claim 1, the phrase “wherein at least one of the lower surface of the upper part and the upper surface of the lower part is irregular” is recited.  In this regard, it is unclear as to what the word “irregular” is intended to mean.  The Examiner notes that the specification only discusses “irregular” in conjunction with a wave form shape of the lower surface of the upper part and the upper surface of the lower part.  However, this wave form shape requirement is set forth in certain dependent claims, but not claim 1.  As such, in light of the doctrine of claim differentiation, the scope of claim 1 is indefinite and ambiguous.  Clarification is therefore requested.
Claim 16 (which depends from claim 1) appears to attempt to require less structure than required by claim 1 (by utilizing the phrase “a portion of the composite floor beam of claim 1”), and is ambiguous because it only addresses making the upper part of the beam.  Thus, it is unclear as to how the lower part of the beam is made.  Clarification is requested.
Allowable Subject Matter
The following proposed amendments would appear to overcome the clarity rejections set forth above and place this application in condition for allowance:
1. (currently amended) A composite floor beam configured for use in a workpiece structure having at least one floor and at least one ceiling and utilities therein, the composite floor beam comprising:
an upper part composed of wood, the upper part extending substantially along a length of the beam, and
a lower part composed of steel, the lower part extending substantially along the length of the beam,
wherein the upper part comprises an upper surface and a lower surface,
wherein the lower part comprises an upper surface and a lower surface,
wherein the upper surface of the upper part is configured to be positioned horizontally to support the workpiece floor above,
wherein the upper surface of the upper part is parallel to the lower surface of the lower part,
wherein the lower surface of the lower part is configured to be positioned horizontally for attachment to the workpiece ceiling below,
wherein at least one of the lower surface of the upper part and the upper surface of the lower part [[is]] has an irregular, waveform shape, and
wherein the lower surface of the upper part and the upper surface of the lower part define apertures therebetween for the workpiece utilities, the apertures passing from a first side of the beam to a second side of the beam transverse to a direction of the length of the beam and between distal ends of the beam.
2. (canceled).
3. (currently amended) The composite floor beam according to Claim 1, characterised in that both the lower surface of the upper part has the irregular, waveform shape.
5. (currently amended) The composite floor beam according to Claim 3, wherein the irregular, waveform shape of the lower surface of the upper part is a first waveform shape and the irregular, waveform shape of the upper surface of the lower part is a second waveform shape
14. (currently amended) A floor panel assembly, comprising:
[[a]] the composite floor beam according to Claim 1, and
a floor panel to which the upper surface of the upper part is joined.
16. (currently amended) A method of making
providing a piece of first material and a piece of second material, wherein the piece of first material is the piece of second material is an I-section steel beam, and
cutting [[the]] each piece of material in the irregular, waveform shape about half way from an upper surface and a lower surface of [[the]] each piece of material, varying according to [[the]] a point thereon first parts and a pair of approximately similar second parts, each of the first parts being usable as an upper part of the composite floor beam and each of the second parts being usable a lower part of the composite floor beam.
23. (new) The composite floor beam according to Claim 5, wherein the first waveform shape and the second waveform shape are identical.
24. (new) The composite floor beam according to Claim 5, wherein the first waveform shape and the second waveform shape are different.
Response to Arguments
Applicant’s arguments submitted on 23 September 2024 have been considered but are moot in light of the new grounds of rejection set forth above.
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 extension fee 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 date of this final action.
Authorization for Email Communication – In the event Applicant wishes to communicate with the Examiner via electronic mail, written authorization should be provided in Applicant’s next response.  See MPEP § 502.03.  The following is a sample authorization form which may be used by Applicant:
Recognizing that Internet communications are not secure, we hereby authorize the USPTO to communicate with any authorized representative concerning any subject matter of this application by electronic mail.  We understand that a copy of these communications will be made of record in the application file.

APPLICANT REBUTTAL: REMARKS
Claims 1-12, 15, and 21 have been amended.
No new matter has been added.
The undersigned is grateful to the Examiner for his attempts to conduct a telephonic interview prior to this Office Action.
Drawings
Replacement drawing sheets 1-4 are submitted herewith in accordance with the Office Action.
Claim Objections
Claims 2-12 and 21 have been amended in accordance with the Examiner's suggestions.
Specification
The correction of the title of the application to "Composite Floor Beam" is acknowledged.
The Abstract has been amended in accordance with the Office Action. In addition, reference numbers have been deleted from the Abstracts.
The specification has been amended in accordance with the Office Action to remove claim numbers from the specification.
The specification has been amended in accordance with the Examiner's suggestion to provided a parenthetical reference in equivalent English units adjacent to metric units.
35 USC
X
Claims 1, 6, 7, 9, 12, 15, 16 and 21 have been amended to correct the rejections of the Office Action
Claims 5 and 8 have been amended to correct the rejections of the Office Action. It is noted that the term "wave like" was used to describe the shape of the lower surface of the upper part, and has its ordinary meaning of shaped "like a wave." That claim language was not directed to structural components other than the one claimed.
35 U
SC &103
Claims 1-12, 14-16
,
and 18-22
Claims 1-12, 14-16, and 18-22 were rejected under 35 USC §103 as being unpatentable over U.S. Patent Application Publication No. 2011/0265422 of Kim et. al. ("Kim") in view of U.S. Patent Application Publication No. Robak et al. ("Robak").
This rejection is respectfully traversed.
Independent claim 1 claims, among other elements, a "composite floor beam for use in a workpiece structure having at least one floor and at least one ceiling and utilities therein, the composite floor beam comprising an upper part made from a
first material comprising wood
extending substantially along a length of the beam and a lower part made from a
second material com
p
risin
g
metal
extending substantially along the length of the beam." (emphasis added).
Neither Kim nor Robak teach or suggest a composite beam that includes a first material comprising wood and a second material comprising metal, much less an upper part made from a first material comprising wood extending substantially along a length of the beam and a lower part made from a second material comprising metal extending substantially along the length of the beam.
Kim is directed to a composite beam fabricated from
steel and concrete.
(Kim; e.g., paragraph [0001]). This follows from the fact that the technical problem to be solved is manufacturing "a composite beam using T-shaped steel that can reduced a pre-stressed concrete
(PC) cross section". (Kim, paragraph [0013]). Kim solves this problem by casting concrete into spaces formed by a web of the steel components. (Kim, e.g., paragraphs [0015] - [0017]). Thus, Kim solves the technical problem with a combination of steel and concrete, in part because concrete can be poured into a web.
Kim does not mention timber or wood once,
because wood and concrete are entirely different materials with entirely different material properties. For example, it is not possible to cast wood in the manner that one can cast concrete. Thus, Kim fails to teach or suggest a composite beam that includes a first material comprising wood and a second material comprising metal
Robak does not remedy the deficiency of Kim. Robak is directed to an engineered wood beam. (Robak, e.g., paragraph [0001]). Robak teaches creating "a blank 20 of wood containing material cut and reformed into a castellated beam 21." (Robak, paragraph [0021]). At no location in its disclosure does Robak mention any kind of metal, much less a composite beam that would utilize both wood and metal. Thus, Robak fails to teach or suggest a composite beam of any kind, much less one that includes a first material comprising wood and a second material comprising metal.
Indeed, combining Robak with Kim would render Kim unsuitable for its intended
purpose. (MPEP 2143.01(V)). Wood cannot be cast like concrete, which is what Kim teaches. Even if Kim could somehow combine wood and steel, the material properties of wood are significantly different from those of concrete.
Further, modifying Kim with Robak would impermissibly change the principle of operation of Robak. (MPEP 2143.01(VI). Because wood cannot be cast like concrete, Kim would have to develop an entirely different kind of composite beam that combined wood and steel in the same way as concrete and steel, if that even would be possible.
Finally, at page 6 of the Office Action, the Office Action asserts that Kim discloses
certain features of Claim 1. In particular, at page 6, line 6 the Office Action characterizes Kim as having a "lower part 300". This characterization misinterprets Kim. Referring to Figure 5, and paragraphs [0079] and [0080], of Kim, the lower part 300 is formed when an I shaped steel 100 is cut in half to form T shaped parts 200 and 300. It is the intention of Kim that
each of 200 and 300
is used to make an upper part of a beam, as evidenced by paragraph [0079], as well as the labelling "200 (300)" in Figure 7 meaning parts 200 and 300 are interchangeable as the upper part. Therefore. part 300 would not be used as the lower part. The Office Action also incorrectly characterizes Figure 15 of Kim as showing that the upper surface of the lower part is irregular. Figure 11 of Kim, taken on line C-C in Figure 10, shows the point where the upper and lower parts combine to define a recess for ducting. At line C-C, the upper surface of the lower part is not irregular; in contrast, rectangular section reinforcement 550 has a flat upper surface.
For the reasons set forth above, independent claim 1 is believed to be in condition for
allowance. Consequently, the remaining claims, all of which depend from claim 1, are believed to be in condition for allowance as well.
With regard to dependent claim 4, in the extremely unlikely event the skilled person
replaces the upper part 200 of Kim with the upper part 22 of Robak as proposed on page 7 of the Office Action, that combination
still does not yield
a composite beam having an upper part with an irregular lower surface and a lower part with an irregular upper surface.
With regard to dependent claim 9, the vertical stiffener 500 in Kim does not engage in an upstanding slot.
With regard to dependent claim 10, the irregular lower surface of the upper part 200 in Kim does not rest on a horizontally aligned part of the lower part, as shown at Figures 13 and Figure 14
.
REQ
UEST FOR ALLOWANCE
The pending claims are believed to be in condition for allowance, and allowance of the
pending claims is respectfully solicited. The Examiner is invited to contact the undersigned if he feels that this may expedite, or otherwise assist, in the prosecution of this application.
Respectfully submitted, /Brian Schar/

NEXT OFFICE ACTION: EXAMINER’S AMENDMENT
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
An Examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
The application has been amended as follows:
Please amend the following claims:
1. (currently amended) A composite floor beam configured for use in a workpiece structure having at least one floor and at least one ceiling and utilities therein, the composite floor beam comprising:
an upper part composed of wood, the upper part extending substantially along a length of the beam; and
a lower part composed of steel, the lower part extending substantially along the length of the beam,
wherein the upper part comprises an upper surface and a lower surface,
wherein the lower part comprises an upper surface and a lower surface,
wherein the upper surface of the upper part is configured to be positioned horizontally to support the workpiece floor above,
wherein the upper surface of the upper part is parallel to the lower surface of the lower part,
wherein the lower surface of the lower part is configured to be positioned horizontally for attachment to the workpiece ceiling below,
wherein at least one of (i) the lower surface of the upper part has an irregular shapedefined by a non-uniform distance extending between the lower surface of the upper part and the upper surface of the upper part that varies along [[the]] an entire length of the upper part, and (ii) the upper surface of the lower part has an irregular shapedefined by a non-uniform distance extending between the upper surface of the lower part and the lower surface of the lower part that varies along [[the]] an entire length of the lower part, and
wherein the lower surface of the upper part and the upper surface of the lower part define apertures therebetween for the workpiece utilities, the apertures passing from a first side of the beam to a second side of the beam transverse to a direction of the length of the beam and between distal ends of the beam.
3. (currently amended) The composite floor beam according to Claim 1, characterised in that both the lower surface of the upper part has [[an]] the irregular shape, and the upper surface of the lower part has [[an]] the irregular shape.
15. (currently amended) The floor panel assembly of claim 14, further comprising a plurality of support columns joined to the floor panel.
16. (currently amended) A method of making the composite floor beam of claim 1, wherein the method comprises:
providing a piece of first material and a piece of second material, wherein the piece of first material is a cuboid piece of timber and the piece of second material is an I-section steel beam, and
cutting each piece of material in the irregular shape, wherein each irregular shape is a waveform shape, about half way from an upper surface and a lower surface of each piece of material, varying according to a point thereon, so as to produce a pair of approximately similar first parts and a pair of approximately similar second parts, each of the first parts being usable as an upper part of the composite floor beam and each of the second parts being usable as a lower part of the composite floor beam.
The following is the Examiner’s statement of reasons for allowance:
The prior art of record neither teaches nor suggests as a whole, either alone or in combination, a composite floor beam having the combination of structural elements set forth in the independent claim, the structural cooperative relationships of elements set forth in the independent claim and the structural configuration capable of performing the functions set forth in the independent claim.  In this regard, it is the Examiner’s view, based on a totality of the record, that it would not have been obvious to modify the relevant prior art to arrive at the claimed invention, as any modification of the prior art of record that would arrive at the claimed invention would require improper hindsight.  In this instance, the preponderance of evidence lies on the side of Applicant.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee.  Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Drawings
The replacement drawings received on 1 February 2025 appear to be acceptable.
Conclusion