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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1, 4-5, 25-26 are pending. Applicant’s previous election of Group I, claims 1, 4-5, 25-26 and the fire retardant coating species (Fig. 2) still applies. There are currently no withdrawn claims.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/29/25 has been entered.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1, 4-5, 24-25 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites an insulation layer as part of the claimed panel. However, the insulation is only ever disclosed in the present application as part of the wall assembly into which the panel is installed (i.e., not part of the panel itself). The insulation would be supported if recited in claims directed to a wall assembly, but this would be a different invention than the elected invention and such claims would be withdrawn.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same new matter issue(s) via their dependency.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 25 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 25 fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 4, 5, 25, 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wen (U.S. 2003/003314) in view of Fensel (CA 2120060) in view of Roberts (U.S. 4,735,838) in view of Parkinson (U.S. 3,843,576) in view of Barber et al. (U.S. 2010/0152352) in view of Kolker (U.S. 5,434,200) in view of Knipe (U.S. 2005/0217537) in view of Phillips (U.S. 2004/0003570) in view of Taniguchi et al. (U.S. 2003/0114606).
Regarding claims 1, 4, 5, 25, 26, Wen teaches an OSB board treated with a spray applied (as in claim 5) primer to promote adhesion to a subsequently applied asphalt adhesive barrier (insulating to at least some degree) film (see abstract, [0012], [0014], [0015]). The asphalt adhesive in Wen is described as “rubber modified” which makes it elastomeric (asphalt/bitumen is also viscoelastic by itself and also inherently water resistant). The spray coated limitation is also an immaterial product by process limitation that does not affect the final product.
Even so, Fensel is also directed to elastomeric/rubber modified asphalt/bitumen adhesives and teaches that they may be applied via spraying (inherently liquid fluid applied as in claim 5) in an more storage stable emulsion form with higher solids to provide waterproofing (see abstract, page 1, page 10, pages 12-13, page 14, page 15) such that it would have been obvious to have used the elastomeric asphalt of Fensel as the elastomeric asphalt called for in Wen because it provides the desired properties (adhesion), can be spray applied via an improved shelf life emulsion with higher solids, and provides waterproofing. As explained above, Fensel is an optional reference in this rejection because the emulsion limitation does not carry patentable weight anyway.
Modified Wen does not disclose the thickness of the asphalt coating, however, this would have been obvious to adjust as part of the optimization of the degree of adhesion and waterproofing desired from the asphalt waterproof/adhesive layer in the overall laminate. Additionally, Roberts is also directed to asphalt adhesive based barrier films (like those used in Wen) and teaches that a suitable thickness to use for the asphalt adhesive overlaps the claimed thickness (see abstract, col. 2, lines 30-35) such that it would have been obvious to have used such a thickness range from Roberts for the asphalt adhesive in Wen because Roberts teaches that such thicknesses allow the asphalt layer to provide good adhesion for the barrier film, as desired by Wen. As explained above, Roberts is an optional reference in this rejection because the thickness limitation is obvious anyway in view of Wen without Roberts.
Wen discloses applying a primer to the OSB before applying the asphalt layer but does not disclose flame retardants. However, Parkinson discloses a primer of ethylene vinyl acetate and acrylic polymers (as suggested by Wen) that may be spray applied to wood to impregnate and toughen the surface and may be heat cured and may have oxide fillers (see abstract, col. 2, lines 25-40, col. 4, lines 30-65, col. 5, line 25-col.6, line 25, col. 7, line 35-col. 8, line 15), such that it would have been obvious to use such a primer in modified Wen because Parkinson teaches that the primer promotes adhesion and also impregnates and toughens the surface of the wood.
Parkinson in modified Wen does not disclose flame retardants (but suggests fillers), but Barber is also directed to vinyl acetate based adhesives for wood and teaches that flame retardants may be included in such a composition and also teaches that magnesium oxide filler (as in claim 1, magnesium oxide being inherently non-combustible) may be included to reduced flaming droplets (see abstract, [0025]-[0030], [0060]) such that it would have been obvious to have included flame retardants and magnesium oxide in the primer of modified Wen in order to provide fire resistance and reduce flaming droplets.
Modified Wen does not disclose that the OSB has flame retardant inside of it. However, Kolker is also directed to OSB and teaches that OSB may be formed from wood (inherently lignocellulosic) strands that form opposing face layers on either side of a core, with flame retardant being applied to the wood strands before forming the board (i.e., included throughout the board), and with the wood strands bonded under heat and pressure (See abstract, col. 2, lines 35-65, col. 7, lines 40-60, col. 12, lines 15-30) such that it would have been obvious to have used such a flame retardant OSB panel in modified Wen to provide additional flame retardant throughout the whole board (thereby further increasing the flame retardance in addition to the flame retardant in the coating).
Modified Wen does not disclose that the flame retardant primer and barrier is applied to all surfaces of the osb. However, the asphalt adhesive membrane (i.e., the water resistant and insulation layer) in Wen provides barrier properties and Parkinson in modified Wen teaches that the primer hardens the surface of the OSB and the flame retardants of Barber provide additional protective (fire protective properties) such that it would have been obvious to have applied such coatings (primer and adhesive barrier) to the entire exposed surface (both surfaces and edges) of the OSB so that all surfaces can benefit from the above improvements (barrier, hardness, and fire protection). Additionally, Knipe is also directed to strengthening and protective/fire retardant coatings for wood that impregnate into the surface, and teaches that both faces and edges of the board may be treated to fully protect the underlying board on all sides (see abstract, [0190]), such that it would have been obvious to have applied the barrier and flame retardant/hardening coatings in modified Wen to all sides of the OSB in order to provide the associated benefits to all sides of the OSB. As explained above, Knipe is an optional reference in this rejection because the limitation on applying coating to all sides is obvious anyway in view of modified Wen without Knipe.
The above multiple coatings (primer and asphalt barrier) would be obvious to form while avoiding dust/dirt/debris because it is common knowledge that extraneous particulates are unwanted when applying adhesives because they create defects in the coatings and/or prevent adhesion. This, it would have been obvious to have prevented “interference” from contaminates (including those from construction) during the coating/curing/drying processes discussed above, as in claim 26.
The combination of OSB, flame retardant primer and asphalt barrier also form an “integral” three layer unit as claimed that is “configured for” the claimed use because the coated OSB may be used as a wall or roof assembly at a construction site (see Wen [0012]). This “configured for” limitation is also an intended use that is not given patentable weight.
Additionally, Phillips is also directed to elastomeric coatings applied to wood substrates (e.g., oriented strand board) and teaches that the coatings may be applied to the panel as claimed prior to the panel (as part of the overall module) being shipped to the home location and installed with the other modules to form a final house as part of the overall manufactured/modular home building process, with such process helping to reduced costs by using mass-production (see abstract, [0003], [0011], [0047], [0054]), such that it would have been obvious to have applied the coatings of modified Wen as part of the manufactured/modular home building process (i.e., before being installed at the construction site) in order to benefit from reduced costs by using mass-production. Applying the coatings prior to shipping for eventual installation (e.g., on a building wall) meets the “integration” limitation and as explained above, the panel is intended for (i.e., configured for) use in assembly/installation of a structural panel at a construction site of a modular home. Furthermore, because claim 26 only prohibits “construction site” dirt/debris interference, any dirt/debris in the production of the panels discussed above from Phillips (in preparation for later construction of a modular home) would not be “construction site” dirt/debris. As explained above, Phillips is an optional reference in this rejection because the limitation of an integrated unit configured for use on a construction site without debris is obvious anyway in view of modified Wen without Phillips.
The above coating thickness would be applied as a “consistent thickness” because there is no suggestion of a discontinuous coating process being used, because the prior art refers to “the thickness” of the coating, and because even a lay-person would seek to apply such a coating in a consistent (including consistent thickness) manner (for consistent properties), and also because there is no limitation in the claim regarding what thickness variation is considered “consistent” or not provided the average thickness is 10 mils (which is an obvious thickness as explained above).
The elastomeric asphalt will inherently surround and seal a nail that is driven into the panel given appropriately selected methodology (i.e., there is no limitation on the temperature at which the property is measured, with temperature being relevant to the degree of elastomeric vs glass-like properties the coating provides, nor is there any limitation on the type, i.e., size, shape, or material, of the nail or the force and depth with which the nail is being driven into the board).
Regarding claims 4 and 25, modified Wen teaches all of the above subject matter but does not disclose including fiberglass reinforced magnesium oxide in the flame retardant primer composition. However, Taniguchi is also directed to flame retardant coatings for wood substrates (see abstract, [0134]) and confirms that silica/silicate fibers (i.e., fiberglass) and magnesium oxide (as already suggested by Barber in modified Wen) prevents dripping and also can provide an additional benefit of enhancing mechanical strength of the coating ([0091]). Thus, it would have been obvious to have included magnesium oxide and glass fibers in the flame retardant primer of modified Wen in order to prevent the coating from dripping during a fire and thereby spreading the fire and additionally to provide the primer with increased mechanical strength, i.e., improved durability (as taught by Taniguchi). Glass is inherently non-combustible. The combination of mechanically strengthening fiberglass and magnesium oxide in the coating as explained above would make the magnesium oxide in the coating “reinforced” by the fiberglass as claimed because the fiberglass would be reinforcing (mechanically strengthening) the whole coating (including the magnesium oxide).
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the cited references fail to teach an insulation layer. As explained above, the barrier layer in the prior art qualifies as both the water resistant layer and insulation layer as claimed and is obvious to put on opposing sides of the OSB, as claimed.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787