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 (i.e., changing from AIA to pre-AIA ) 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.
Status of Claims
Claims 8-11 and 23-39 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 6 April 2026 has been entered.
Claim Rejections - 35 USC § 112(d)
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 23 is 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 8, from which claim 23 ultimately depends, already requires that the thermal stock has notches and weakening zones for corner folds formed therein.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 31 and 34-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 6,910,311 to Lindberg et al. cited in the Information Disclosure Statement filed 6 April 2021 (herein Lindberg).
Regarding claim 31, Lindberg teaches a composite member comprising thermally conductive components having a gap therebetween in which a reinforced polymer is disposed (abstract). Fig 3 of Lindberg shows thermally conductive elements 34 and 36 with a gap therebetween that is filled with insulating component 39 (Col 3, lines 55-65) wherein thermally conductive elements 34 and 36 correspond to the first and second frame stock portions recited in the instant claims, and insulating component 39 corresponds to the thermal interruption strip recited in the instant claims. Fig 3 of Lindberg also shows that the insulating component 39 overlaps and separates the opposing edges of thermally conductive elements 34 and 36 (Col 4, lines 15-22). Lindberg teaches that the composite member is formed by joining the thermally conductive elements in a flat state as a preform (Col 6, line 16 – Col 7, line 19 and Fig 15). The flat preform is the component that corresponds to the thermal stock recited in the instant claims. Furthermore, one of ordinary skill in the art would recognize that the thermally conductive elements 34 and 36 would inherently have a higher thermal conductivity than the insulating component 39. Lindberg teaches that the composite member can be provided with holes a needed through the thermally conductive elements or the insulating component (Col 5, lines 56-65) which meet the limitation of having a first and second gas fill aperture.
Regarding the thermal interruption strip being formed via coextrusion, the instant claims are directed to a thermal stock and not the method by which it is made. The insulating component of Lindberg has the same structure as the claimed thermal interruption strip and therefore can be considered to meet the claimed limitations. Applicant has provided no showing of evidence demonstrating that a coextruded thermal interruption strip results in a structure differing from that of the prior art. See MPEP 2113(I).
Regarding claim 34, Lindberg teaches all the limitations of claim 31 as discussed above.
Lindberg teaches that the thermally conductive elements are typically made of steel (Col 3, lines 57-60) and the insulating component can be made of fiber reinforced polypropylene (Col 4, lines 23-27).
Regarding claim 35, Lindberg teaches all the limitations of claim 31 as discussed above.
Fig 3 of Lindberg shows that the insulating component 39 has a polygonal H shape and the opposing edge portions of the thermally conductive components 34 and 36 are covered by the insulating component 39 (Col 4, lines 15-23).
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.
The factual inquiries 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.
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.
Claim(s) 8-11, 23-30, and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lindberg in view of U.S. Pre-grant Publication 2008/0060290 to McGlinchy et al. cited in the Information Disclosure Statement filed 6 April 2021 (herein McGlinchy).
Regarding claim 8, Lindberg teaches a composite member comprising thermally conductive components having a gap therebetween in which a reinforced polymer is disposed (abstract). Fig 3 of Lindberg shows thermally conductive elements 34 and 36 with a gap therebetween that is filled with insulating component 39 (Col 3, lines 55-65) wherein thermally conductive elements 34 and 36 correspond to the first and second frame stock portions recited in the instant claims, and insulating component 39 corresponds to the thermal interruption strip recited in the instant claims. Fig 3 of Lindberg also shows that the insulating component 39 overlaps and separates the opposing edges of thermally conductive elements 34 and 36 (Col 4, lines 15-22). Lindberg teaches that the composite member is formed by joining the thermally conductive elements in a flat state as a preform (Col 6, line 16 – Col 7, line 19 and Fig 15). The flat preform is the component that corresponds to the thermal stock recited in the instant claims. Furthermore, one of ordinary skill in the art would recognize that the thermally conductive elements 34 and 36 would inherently have a higher thermal conductivity than the insulating component 39. Fig 3 of Lindberg shows that the insulating component 39 has a polygonal H shape and the opposing edge portions of the thermally conductive components 34 and 36 are covered by the insulating component 39 (Col 4, lines 15-23).
Lindberg is silent as to the thermally conductive elements having notches and weakening zones.
McGlinchy teaches a spacer frame assembly (abstract) having thermal interruptions formed therein (paragraph 0009). McGlinchy teaches that the spacer frame is formed from a strip of metal in which notches and weakened zones are formed (paragraph 0026).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite member of Lindberg to include the notches and weakening zones of McGlinchy because it would allow the composite member to easily have corners bent therein (paragraph 0026).
Regarding claim 9, Lindberg and McGlinchy teach all the limitations of claim 8 as discussed above.
Fig 3 of Lindberg shows that the insulating component 39 has a polygonal H shape and the opposing edge portions of the thermally conductive components 34 and 36 are covered by the insulating component 39 (Col 4, lines 15-23).
Regarding claims 10, 11, and 27, Lindberg and McGlinchy teach all the limitations of claim 9 as discussed above.
Lindberg is silent as to a film material being applied to the composite member.
McGlinchy teaches that the spacer frame has thermal interruptions in the form of openings (paragraph 0032 and Figs 5 and 6). McGlinchy teaches that the thermal interruptions are covered on both sides with strips of barrier film along the linear extent of the frame (paragraph 0034), i.e. the film takes up the entirety of the section of the frame that constitutes the bottom of the channel.
It would have bene obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite member of Lindberg to include the barrier film of McGlinchy because it would limit the transfer of moisture vapor (paragraph 0034).
Regarding claim 23, Lindberg and McGlinchy teach all the limitations of claim 10 as discussed above.
As discussed above, Lindberg as modified according to McGlinchy includes notches and weakening zones.
Regarding claims 24-26, Lindberg and McGlinchy teach all the limitations of claim 10 as discussed above.
Lindberg teaches that the opposing edges of the thermally conductive elements 34 and 36 can have holes formed therein to improve the bonding between the thermally conductive elements 34 and 36 and thermal barrier material 39 (Figs 4-8 and Col 4, lines 44-65). Lindberg teaches that the shape and pattern that the holes take any number of configurations and is not particularly limited (Col 4, lines 57-65). Regarding the edges having the claimed undulations, changing the shape of the holes of Lindberg such that they overlap the edges of the thermally conductive elements 34 and 36 would result in the claimed configuration. Such changes in shape have been held to be obvious. See MPEP 2144.04(IV)(B).
Regarding claim 28, Lindberg and McGlinchy teach all the limitations of claim 10 as discussed above.
Lindberg teaches that adhesive films are placed on both sides of the metal strips between the metal strips and thermal insulation strips that form the thermally conductive elements and thermal interruption material (Col 6, lines 22-26).
Regarding claim 29, Lindberg and McGlinchy teach all the limitations of claim 10 as discussed above.
Fig 3 of Lindberg shows that the insulating component 39 has a polygonal H shape and the opposing edge portions of the thermally conductive components 34 and 36 are covered by the insulating component 39 (Col 4, lines 15-23). Lindberg teaches that adhesive films are placed on both sides of the metal strips between the metal strips and thermal insulation strips that form the thermally conductive elements and thermal interruption material (Col 6, lines 22-26).
Regarding claim 30, Lindberg and McGlinchy teach all the limitations of claim 10 as discussed above.
Lindberg teaches that the thermally conductive elements are typically made of steel (Col 3, lines 57-60) and the insulating component can be made of fiber reinforced polypropylene (Col 4, lines 23-27).
Regarding claim 39, Lindberg and McGlinchy teach all the limitations of claim 10 as discussed above.
Lindberg teaches that the flat preform can be wound onto a mandrel before further processing (Col 6, lines 54-62).
Claim(s) 32 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lindberg as applied above and in view of McGlinchy.
Regarding claims 32 and 33, Lindberg teaches all the limitations of claim 31 as discussed above.
Lindberg is silent as to a film material being applied to the composite member.
McGlinchy teaches a spacer frame assembly (abstract) having thermal interruptions formed therein (paragraph 0009). McGlinchy teaches that the spacer frame has thermal interruptions in the form of openings (paragraph 0032 and Figs 5 and 6). McGlinchy teaches that the thermal interruptions are covered on both sides with strips of barrier film along the linear extent of the frame (paragraph 0034), i.e. the film takes up the entirety of the section of the frame that constitutes the bottom of the channel.
It would have bene obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite member of Lindberg to include the barrier film of McGlinchy because it would limit the transfer of moisture vapor (paragraph 0034).
Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lindberg as applied above and in view of McGlinchy.
Regarding claim 36, Lindberg teaches all the limitations of claim 31 as discussed above.
Lindberg teaches that the opposing edges of the thermally conductive elements 34 and 36 can have holes formed therein to improve the bonding between the thermally conductive elements 34 and 36 and thermal barrier material 39 (Figs 4-8 and Col 4, lines 44-65). Lindberg teaches that the shape and pattern that the holes take any number of configurations and is not particularly limited (Col 4, lines 57-65). Regarding the edges having the claimed undulations, changing the shape of the holes of Lindberg such that they overlap the edges of the thermally conductive elements 34 and 36 would result in the claimed configuration. Such changes in shape have been held to be obvious. See MPEP 2144.04(IV)(B).
Claim(s) 37-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lindberg in view of McGlinchy.
Regarding claim 37, Lindberg teaches a composite member comprising thermally conductive components having a gap therebetween in which a reinforced polymer is disposed (abstract). Fig 3 of Lindberg shows thermally conductive elements 34 and 36 with a gap therebetween that is filled with insulating component 39 (Col 3, lines 55-65) wherein thermally conductive elements 34 and 36 correspond to the first and second frame stock portions recited in the instant claims, and insulating component 39 corresponds to the thermal interruption strip recited in the instant claims. Fig 3 of Lindberg also shows that the insulating component 39 overlaps and separates the opposing edges of thermally conductive elements 34 and 36 (Col 4, lines 15-22). Lindberg teaches that the composite member is formed by joining the thermally conductive elements in a flat state as a preform (Col 6, line 16 – Col 7, line 19 and Fig 15). The flat preform is the component that corresponds to the thermal stock recited in the instant claims. Furthermore, one of ordinary skill in the art would recognize that the thermally conductive elements 34 and 36 would inherently have a higher thermal conductivity than the insulating component 39. Fig 3 of Lindberg shows that the insulating component 39 has a polygonal H shape and the opposing edge portions of the thermally conductive components 34 and 36 are covered by the insulating component 39 (Col 4, lines 15-23). Lindberg teaches that the composite member can be provided with holes a needed through the thermally conductive elements or the insulating component (Col 5, lines 56-65) which meet the limitation of the claimed gas fill apertures.
Lindberg is silent as to the thermally conductive elements having notches and weakening zones.
McGlinchy teaches a spacer frame assembly (abstract) having thermal interruptions formed therein (paragraph 0009). McGlinchy teaches that the spacer frame is formed from a strip of metal in which notches and weakened zones are formed (paragraph 0026).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite member of Lindberg to include the notches and weakening zones of McGlinchy because it would allow the composite member to easily have corners bent therein (paragraph 0026).
Regarding the arrangement of the notches, weakening zones, and gas fill apertures, arranging the various structures as needed has been held to be obvious. See MPEP 2144.04(VI)(C).
Regarding claim 38, Lindberg and McGlinchy teach all the limitations of claim 37 as discussed above.
Fig 3 of Lindberg shows that the insulating component 39 has a polygonal H shape and the opposing edge portions of the thermally conductive components 34 and 36 are covered by the insulating component 39 (Col 4, lines 15-23). Lindberg teaches that adhesive films are placed on both sides of the metal strips between the metal strips and thermal insulation strips that form the thermally conductive elements and thermal interruption material (Col 6, lines 22-26).
Response to Arguments
Applicant's arguments filed 6 April 2026 have been fully considered but they are not persuasive.
Applicant argues that Lindberg and McGlinchy do not teach the claimed notches or weakening zones (Remarks, page 8). As discussed above, McGlinchy explicitly teaches the use of notches and weakening zones.
Applicant argues that Lindberg does not contemplate corner formation (Remarks, page 8). The fact that Lindberg does not explicitly teach corner formation is immaterial because Lindberg does not teach that the composite member is restricted solely to straight sections with not corners or bends. Therefore, one of ordinary skill in the art seeking to make a corner in the composite member would not be precluded from using the teachings of McGlinchy.
Applicant argues that one cannot apply the teachings of McGlinchy to Lindberg because McGlinchy teaches a frame made from a single piece whereas Lindberg uses separate components (Remarks, page 8). Both Lindberg and McGlinchy use similar manufacturing stamping, rolling, and forming processes. Furthermore, Fig 4 of McGlinchy shows the exact forming apparatus disclosed in Fig 7 of the instant application. Applicant has provided no showing of evidence demonstrating how the apparatus of McGlinchy would not be able to stamp notches and weakening zones in a member formed of separate components.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY M DAVIS whose telephone number is (571)272-6957. The examiner can normally be reached M-F 7-4:30, off 2nd Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria V Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY M DAVIS/Primary Examiner, Art Unit 1783
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