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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicants’ submission filed on 07/06/2026 has been entered.
Drawings
The drawings field 4/4/2020 are accepted.
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.
Claims 1,3-8, 11-13 and 19 (all pending claims) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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-AlA 35 U.S.C. 112, the applicant), regards as the invention.
It is unclear what is meant by “structural sheathing panel.” Said term is not defined in the specification and does not have an art-accepted meaning. Herein, the term is understood to be an intended use limitation that has not been shown to inherently require additional structural/physical features.
Similarly, said claims are held to be indefinite because it is unclear what is meant by "a radiant barrier structural sheathing". Said term is not defined in the specification and does not have an art- accepted meaning. Herein, the term is understood to be an intended use limitation that has not been shown to inherently require additional structural/physical features.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-8, 11-13, and 19 (all pending claims) are rejected under 35 U.S.C. 103 as being unpatentable over JP2003-145672A (herein referred to as Dainippon) in view of Dowden et al (US 2015/0259534).
Dainippon teaches a decorative laminate comprising a metallic tone finish applied to a plywood, MDF, or other woody base material (0010). The decorative laminate is adhered to the substrate using an adhesive (0011). The decorative laminate comprises a vapor deposited or sputter metal layer such as aluminum (0017) and a transparent resin (3) which may comprise PET (0016). A colored layer may be applied between the transparent resin layer (3) and metal layer 2. A second resin layer comprising PET (4) may be located between the metal layer (2) and the wood-base substrate (0027). Herein, (a) layers 2, 3,and 4 collectively, (b) layers 2 and 3, or (c) layers 3 and 4 may be understood to read on the claimed ”metallized film or sheet” of claim 1. The adhesive may comprise a urethane adhesive (0036). Dainippon the metal is deposited on the outside of layer (4) and the inner side of layer 4 is secured to the first face of the wood based substrate. The PET layer (4) may be corona treated on both sides (0035). Said laminate is understood to read on the claimed “radiant barrier structural sheathing, configured to reduce radiant heat emissions from the substrate through the outer side of the metallized film or sheet” limitation of claim 1 since the layers are compositionally and structurally identical to applicant’s claimed invention. Specifically, Dainippon teaches the substrate may be plywood and applicant teaches plywood is a suitable “structural sheathing panel.” Furthermore, Dainippon teaches the metal layer may comprise an aluminum deposited layer with a thickness of 6-10um (0022) and applicant teaches metallized films of the same material and thickness are suitable in the claimed invention.
With regards to the limitation “with an inner face and outer faced, said inner face configured to face into an attic space and a second face facing the exterior of the roof when installed as part of a roof deck,” said term is understood to be an intended use limitation and not require that the claimed inventio be installed as part of a roofing deck. Furthermore, said limitation is not understood to further limit the claimed invention with regards to structure. Since the laminate of the prior art is structurally identical to the claimed invention, the examiner takes the position the prior art laminate is capable of performing the claimed use.
With regards to claim 3, Dainippon teaches the metal may be aluminum.
With regards to claim 4, Dainippon the metal is deposited on the outside of layer (4) and the inner side of layer 4 is secured to the first face of the wood based substrate.
With regards to claim 5, Dainippon teaches using an adhesive to secure the metallized film to the wood-based substrate.
With regards to claim 6, Dainippon teaches the adhesive may be polyurethane.
With regards to claim 7, the metallized film or sheet is understood to be “unbacked” since there is no additional layer present.
With regards to claim 8, Dainippon teaches embodiments wherein the only layer between the metallized sheet or film and the first face of the substrate is the adhesive.
With regards to claim 11, Dainippon teaches both surfaces of layer 4 may be corona treated. In said embodiment, the surface modifying layer (the corona treated layer) is between the metallized film or sheet and the first face of the wood based substrate.
With regards to claim 12, Dainippon teaches the surface is treated by corona treatment; such treatments are known in the art to increase adhesive bonding.
With regards to claim 13, the examiner takes the position that the outer resin layer 3 reads on the claimed “anti-oxidation layer applied to the metallized film or sheet.”
Dainippon does not teach the substrate should comprise OSB. However, Dowden teaches that OSB may be used as a substrate in furniture applications due to its high mechanical properties (0108). Thus, it would have been obvious to the skilled artisan to utilize OSB as the wood based substrate of Dainippon as OSB is known to be useful in furniture applications due to its high mechanical properties.
With regards to claim 15, Dainippon teaches a conveyor line method wherein the metallized PET film is pressed to the layer of adhesive on the face of the substrate (0034+) wherein the substrate may be wood based.
With regards to claim 16, Dainippon teaches depositing the metal on the outer side of PET film (4).
With regards to claim 17, Dainippon teaches the laminate may be cut (0043) and machined (0004). Said cut and/or machine section would read on the claimed “panel” separated from the section of OSB.
With regards to claim 19, Dainippon teaches the laminate may have a protective layer (0023). When said protective layer is not present, the prior art is understood to teach “the product of claim 1, wherein no anti-oxidation layer is applied to the metallized film or sheet.”
Response to Arguments
Applicants’ arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Rejections Under Section 112
With regards to the rejection of claims 1-8, 10-13 and 15-19 under 35 USC 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the
inventor regards as the invention because it is unclear what is meant by "structural sheathing panel," and "a radiant barrier structural sheathing," Applicant traverses the rejections. Specifically, applicants argue each term has a clear accepted meaning and are well known in the art of engineered wood products and in the home and light commercial construction industry. Applicants contend the terms are well-known in the art as reflecting the strength and related physical characteristics of the materials referenced, which in turns makes them suitable or not suitable for particular types of construction. Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. Applicants seemingly concede the terms are not defined in the specification. Furthermore, while applicant asserts that the terms have art-accepted meanings, applicant fails to provide adequate evidence supporting said argument. Additionally, applicant argues the claimed terms structurally limit the claimed invention with regards to the “strength and related physical characteristics” of the materials which can be utilized but provides no evidence for said conclusion or evidence supporting the characteristics they assert are required by the claim.
With regard to the term “a radiant barrier structural sheathing” Applicant argues the industry recognizes both "nonstructural sheathing" and "structural sheathing." Applicant argues according to the APA Engineered Wood Construction Guide: "Nonstructural sheathing is defined as sheathing not recognized by building codes for meeting both bending and racking strength requirements." Applicant contends, therefore, that structural sheathing thus means panels specifically designed for subflooring and wall and roof sheathing. In contrast, decorative panels are a type of specialty panel that lack the physical characteristics and strength to serve as structural sheathing,(APA Construction Guide at 12.) Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. While applicant attempts to define a “structural sheathing” using the converse of the definition offered for “non-structural sheathing,” the definition offered by applicant is not clearly inferred from the disclosure of the APA guide. Furthermore, a search of the prior art fails to establish the term has an art-accepted meaning.
With regard to "a radiant barrier structural sheathing," applicant argues said term is a recognized term in the above-described industry. Specifically, applicant argues Tanzer and Ritter, U.S.
Pub. 2004/0020581 (Feb. 5, 2004) at 1 0003 discloses, a radiant barrier sheathing panel addresses problems relating to heat transfer from a roof structure into an attic space and comprises a substrate of plywood or oriented strand board (OSB) with a layer of a radiant barrier material adhered thereto Id at 1 0006. The radiant barrier material comprises a layer of metallic foil (e.g., aluminum foil), preferably with
the metal prelaminated to a supporting or backing layer such as Kraft paper or polymeric substrate. Id. at 1 0006, 0018, 0053. Applicant argues Tanzer discloses “a radiant barrier sheathing panel addresses problems relating to heat transfer from a roof structure into an attic space” and “comprises a substrate of plywood or oriented strand board (OSB) with a layer of a radiant barrier material adhered thereto Id. at 0006.” Said argument is noted but is not persuasive; the examiner notes Tanzer discusses “radiant barriers” but does not use the term “radiant barrier structural sheathing” or “radiant barrier sheathing”. Thus, the reference fails to demonstrate the claimed term has an art-accepted definition. Furthermore, the description cited by applicant requires the structure to ““comprises a substrate of plywood or oriented strand board (OSB) with a layer of a radiant barrier material adhered thereto.” The examiner notes the claim explicitly requires “a substrate comprising an oriented strand board (OSB)” and “a metallized film” which “together are a radiant barrier structural sheathing product”. Thus, it seems applicant is arguing the term “radiant barrier structural sheathing product” does not require anything more than a product comprising “a substrate comprising an oriented strand board (OSB)” and “a metallized film”. If applicant agrees, then the rejection can be overcome.
Rejections Under Section 103
With regards to the rejection of claims 1-8, 11-13, 15-17 and 19 under 35 USC 103 as being
unpatentable Dainippon (JP2003-145672A) in view of Dowden (2015/0259534), applicant argues it is clear from the disclosure of Dainippon that the invention of Dainippon cannot be used as a radiant barrier and is not a structural sheathing panel. Further, claim 1 has been amended to recite wherein the metallized film or sheet and the wood-based structural sheathing substrate together are configured to reduce radiant heat emissions from the substrate through the outer side of the metallized film or sheet. Applicant contends Dainippon does not teach this and Dowden does not cure this defect.
Dainippon discloses a decorative plate in which a decorative material is attached to a base material (1). The decorative laminate material is constituted of a metallic layer (2) such as a metallic foil or vapor-deposited film, and a transparent resin layer (3), such as a PET resin film. The transparent resin layer is located on the side opposite side to the base material. Further, a second resin layer (4) is sandwiched between the base material (1) and the metallic layer (2). Applicant argues the reference does not mention thermal emissivity or a radiant barrier at all. Said argument is noted but is not persuasive for reasons of record. Applicant further argues the panel of Dainippon is “not a radiant emissivity barrier structural panel” of the present invention and cannot be used as such. Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. As noted above, applicant has not provided any evidence supporting the conclusion a “radiant barrier structural sheathing” as claimed further structurally limits the claimed invention. While applicant argues a primary difference is that the present invention is a “radiant barrier structural sheath” (or sheathing panel) which “forms a structural element…that significantly limits the amount of heat that radiates from it surface”, it is unclear how Dainippon fails to teach such features. Specifically, the metallized layer of Dainippon will limit the amount of heat that radiates from the surface (for reasons noted in the rejection). Furthermore, the presence of the OSB board makes the invention of Dainippon a structural element. Applicants argue the invention of Dainippon “is not suitable or usable as structural sheathing”; however, applicant has not provided any evidence supporting said conclusion.
In addition, Applicants argue the invention of Dainippon always requires a protective resin layer overlying the metal layer. Dainippon requires that the outer resin layer (3) be transparent to allow the look of the metal layer to be seen through the resin layer for decorative effect and provides some protection of the metal layer from a hot object. Said argument is noted but is not persuasive as the claims do not exclude the presence of additional layers. Applicant argues Dainippon teaches the resin layer can conduct heat from a hot object on one side to the metal on the other side. [0030]. Applicant argues a conductive material on the surface of the foil substantially impairs its ability to act as a radiant barrier; thus, Dainippon cannot effectively act as a radiant barrier structure due to the mandated surface resin layer (3). Said argument is noted but is not persuasive as the examiner cannot find any requirement in Dainippon that the surface layer is conductive. Furthermore, counsel’s argument cannot take the place of evidence. Applicants have not shown the presence of the resin layer would prevent the invention of Dainippon from effectively acting as a radiant barrier structure.
Applicant argues the present invention is designed with the metallized layer on the outside of
the PET film, rather than inside. That is, the metallized layer of the present invention is not between the PET film and the substrate, as taught by Dainippon. Said argument is noted but is not persuasive as Dainippon teaches a PET substrate (4) may be placed between the wood and metal layers (see Figure 2 of applicant’s arguments). Thus, no modification of Dainippon is necessary to obtain a structure wherein a PET layer is positioned between the wood substrate and the metal layer.
For the reasons noted above, applicants’ arguments are not persuasive, and the claims remain rejected for reasons of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lin (US 2015/0344722) teaches a substrate comprising a decorative metallic coating. US 2022/0021002 teaches the natural oxide formed on an aluminum layer is an antioxidant coating (0089 and 0098). US 11/859,384 teaches an aluminized PET layer and a layer of OSB (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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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.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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