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 .
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 1-8, 10-13 and 15-19 (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) 1-8, 11-13, 15-17, and 19 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 outer side” 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 a first face facing 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 2, Dainippon teaches the synthetic films (3 and 4) may be PET.
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.
Claim(s) 10 and 18 is/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), as applied to claims 1-9 and 11-17 above, and further in view of GB 824,438 (herein referred to as “Lickman”).
Dainippon is relied upon as above, but does not teach that the polymer layers can be metallized on both surfaces thereof. However, Lickman teaches that a decorative metallized plastic film may have metallized films applied on both faces thereof (page 1, lines 9+) to provide the film with a bright appearance of a metal foil. Thus, it would have been obvious to one of ordinary skill in the art to apply metallized films to both faces of the polymer films of Dainippon in order to improve the appearance of the metallized film.
With regards to claim 18, the deposited aluminum layer of Dainippon is understood to read on the claimed “first vapor deposited layer of aluminum on the inner side,” the aluminum deposited layer rendered obvious by Lickman is understood to read on the claimed “second aluminum deposited layer of aluminum on the outer side,” the adhesive of Dainippon is understood to read on the claimed “adhesive layer disposed on the first face of the wood-based substrate,” the resin layer 4 of Dainippon is understood to read on the claimed “surface modifying layer disposed on the adhesive layer rand contacting the first vapor deposited layer of aluminum. With regards to the claimed “anti-oxidant coating layer disposed on an outermost face of the second vapor deposited layer of aluminum opposite the synthetic film or sheet”, Dainippon teaches the laminate may have a protective layer (0023) which herein is understood to read on the claimed anti-oxidant coating layer.
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
Applicant's arguments filed 10/24/2025 have been considered but they are not fully persuasive.
Rejections Under Section 112
With regards to the rejection of claims 1-8, 10-13 and 15-19 (all pending claims) 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," as said terms are not defined in the specification and do not have art-accepted meanings, applicant traverses the rejection.
Specifically, applicant asserts said 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. Applicant seemingly concedes 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 sheathing, Applicant argues the industry recognizes both “nonstructural sheathing” and “structural sheathing.” Applicant argues the APA Engineered Wood Construction Guide states: “Nonstructural sheathing is defined as sheathing not recognized by building codes for meeting both bending and racking strength requirements.” (APA construction Guide at 68-of record 1/22/2024) Applicant argues said disclosure supports the conclusion that “Structural sheathing thus means panels specifically designed for subflooring and wall and roof sheathing, and is typically manufactured as OSB, plywood or similar wood-based panel.” 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.
Applicant argues, in contrast to structural sheathing, decorative panels are limited to use as interior accent walls, counter facing, built-ins, exhibit displays, exterior siding, gable ends, and fences. APA Construction Guide at 12. Applicant argues said uses are dictated by the panel’s lack of physical characteristics and strength to serve as structural sheathing. However, applicant provides no evidence for said conclusion. Applicant is reminded that counsel’s argument cannot take the place of evidence.
With regard to "a radiant barrier structural sheathing," applicant argues the term is recognized in the industry of engineered wood products and in home and light commercial construction industries. Applicant then limits their discussion to the roofing industry, arguing “roof decking typically is formed of structural wood products, such as oriented strand board (OSB), which are attached to the structural members of a house by nails or similar fasteners. The roof decking defines the roof of the house and provides a substrate for joining the outer protective materials (e.g., tar paper and shingles). See Tanzer and Ritter, U.S. Pub. 2004/0020581 (Feb. 5, 2004) at 1 0003. The roof structure thus comprises materials that inherently have minimal thermal insulating and emissivity barrier properties, SO that heat transfer through the roof structure from the outdoors to the interior space (e.g., attic) is a significant problem.”
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.
Applicant argues a radiant barrier “requires that the material have low emissivity,” because it works by preventing the transfer of heat from the radiant barrier sheathing panel into the space in the attic space to which the radiant barrier material is exposed. Said argument is noted but is not persuasive as the argument is not commensurate in scope with the pending claims; the claims are not limited with regards to emissivity. Furthermore, applicant notes that “Prior art radiant barriers comprise a sheathing panel or substrate with a highly reflective material adhered to the panel face facing the attic space.” The reflective material, typically a metal such as aluminum or copper, has a low emissivity
of typically 0.05 or less, and is efficient at not transmitting radiant energy into the attic environment. Thus, it again 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. Otherwise, the rejection is maintained for the reasons of record.
Rejections Under Section 103
With regards to 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. Specifically, applicant argues 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). The decorative board may be used for building interior materials, furniture materials, and the like [0001]. The decorative plate of Dainippon also may be used for a top plate or table top. [0032] 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 radiate from the surface (for reasons noted in the rejection). Furthermore, the presence of the OSB board makes the invention of Dainippon a structural element. Applicant argues the invention of Dainippon “is not suitable or usable as structural sheathing”; however, applicant has not provided any evidence supporting said conclusion.
Applicant further argues the invention of Dainippon always requires a protective resin layer overlying the metal layer. 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. Applicant has not shown the presence of the resin layer would prevent the invention of Dainippon from effectively acting as a radiant barrier structure.
With regards to the rejection of claims 10 and 12 under 35 USC 103 as unpatentable over Dainippon/Dowden in view of Lickman (GB 824,438), applicant traverses for the reasons set forth above with regards to the independent claim. Furthermore, applicant argues adding a metallic layer to the outside of the resin layer of Dainippon would modify its principle of operation and render it unable to carry out its intended function. Specifically, applicant argues 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. [0014], [0021]. If Dainippon is modified as proposed, the outer metal layer on the resin would block the view of the metal layer to be seen through the resin layer for the decorative effect. Said argument is noted but is not persuasive as the placement of a second metallic layer on the outer plastic layer would mean metal would be visible on the surface of the structure. Alternatively, if a second metal layer is applied to the plastic layer located between the metal layer and the wood-base substrate, the transparent layer would still be the exterior layer of the structure. In either construction, the view of the metal layer is not blocked. Applicant further argues the second metal layer would not be protected by the resin layer from a hot object being placed on the outer metal layer. Said argument is noted but is not persuasive as the placement of a second metallic layer on the outer plastic layer would mean the inner layer would still be protected by the resin layer. Alternatively, if a second metal layer is applied to the plastic layer located between the metal layer and the wood-base substrate, the protective transparent layer would still be the exterior layer of the structure.
For the reasons noted above, applicant’s 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 anti-oxidant coating (0089 and 0098). US 11/859,384 teaches an aluminized PET layer and a layer of OSB (abstract).
THIS ACTION IS MADE FINAL. 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 KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787