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.
Status of Claims
This action is in reply to the communication filed on November 25, 2025.
Claim 1 has been amended and is hereby entered.
Claim 8 has been cancelled. Claims 4 – 6, 9 and 10 have been cancelled previously.
Claims 11 – 20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of producing an insulation product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed November 18, 2022.
Claims 1 – 3, 7, and 21 are currently pending and have been examined.
This action is made FINAL.
Response to Arguments
Applicant's arguments filed November 25, 2025 have been fully considered but they are not persuasive.
Applicant argues that it would not have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide any amount of insulation less than what is taught as preferred by Alderman and that the amount of phase change material as taught by Alderman should be interpreted as a minimum amount required to provide a benefit. Applicant notes that Alderman only recites one range of PCM amount, 5 – 6 ounces per square foot. Examiner respectfully disagrees. Alderman teaches a desirable coating is “approximately 5 – 6 ounces per square foot.” The word approximately would support values above and below 5 – 6 ounces per square foot. Examiner notes that the upper end of the claimed range converts to 4 ounces per square foot, which can be interpreted as “approximately 5 ounces per square foot.” Additionally, Alderman does not criticize, discredit or otherwise discourage a lower amount of PCM, therefore it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a lower amount of PCM to achieve a predictable result, i.e. a lower amount of insulative property, which may be required for certain applications where less insulation is required, such as non-living spaces or buildings in more temperate environments. Furthermore, the invention of the prior art is not limited to or defined by only those embodiments disclosed in the Examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). Additionally, a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551,554, 31 USPQ 2d 1130, 1132 (Fed. Cir. 1994).
Information Disclosure Statement
The references provided in the Information Disclosure Statements filed on November 25, 2025 and February 24, 2026 have been considered. Signed copies of the corresponding 1449 forms have been included with this office action.
Claim Rejections - 35 USC § 112
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.
Claims 1 – 3, 7 and 8 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 requires a paraffin phase change material positioned about 1 inch to about 2 inches from the first major surface that “provides a mass-enhanced R-value benefit from about 4.8 to 6.8.” Applicant points to Figure 4 and the associated description in the specification as support for the claimed limitations. Figure 4 shows the effect of the addition of paraffin at one specific loading, 0.1 lb/ft2 where the paraffin has a melting temperature of 24°C and is provided in an amount of 25%. The R-value benefit for this particular type and compound of PCM is 4.8 for 1” down and 6.8 for 2” down. These two data points do not appear to be sufficient support for the full range of the claim which encompasses any amount of phase change material between 0.05 – 0.25 lb/ft2 based on the surface area of the fibrous insulation, and any paraffinic phase change material with a melting point between 15°C and 30°C. Therefore, the claim amendment does not appear to be supported by the specification as filed an appears to constitute new matter.
Claims 2, 3, 7 and 8 are rejected as being dependent on claim 1.
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 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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claims 1 – 3, 7 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Alderman (US5770295A) in view of Lipford (Lipford, Danny. “Everything You Need To Know About Insulation’s R-Value.” December 27, 2018.), Shi (US20210230862A1), and Shramo (US5875835A). Zhang (Zhang, Kai et al. “Preparation and Thermal Characterization of n-Octadecane/Pentafluorostyrene Nanocapsules for Phase Change Energy Storage.” Journal of Energy Storage. 35(2021): 102327.) is used as an evidentiary reference for claims 1 and 8.
Alderman teaches an insulation system placed in ceilings or walls of buildings where the insulation system contains two layers of insulative material and a phase change material (Abstract). As per claims 1 and 8, Alderman teaches:
An insulation product comprising a fibrous insulation component made up of a plurality of randomly oriented fibers in the form of a batt comprising a first major surface and a second major surface and a phase change material in the form of a layer (Abstract: “The insulation system (10,180) includes a first inner layer of insulative material (18, 184) and a second outer layer of insulative material (19, 186), with an intermediate layer of phase change material (20, 182) sandwiched therebetween” & Column 16, Lines 13 – 17: “Fig. 20 illustrates a method 320 wherein a PCM solution 232 in a liquid state is applied directly to glass fibers of a partial batt 237 of fiberglass insulation as the batt of insulation is being fabricated.” As the fiberglass is in batt form, the fibers are interpreted as being randomly oriented as claimed. The batt will naturally have a first and second major surface.)
A paraffin phase change material (Column 9, Lines 12 – 18: “The phase change material can be selected from a group consisting of: … paraffin (such as n-Tetradecane (C-14), n-Hexadecane (C-16), and n-Octadecane (C-18)…”)
The paraffin phase change material being present in an amount of 0.05 lb/ft2 to 0.25 lb/ft2 based on the surface area of the fibrous insulation component (Column 15, Lines 19 – 22: “It has been determined that a desirable coating of PCM solution is approximately 5 – 6 ounces per square foot.” Examiner notes that this converts to 0.3125 – 0.5 lb/ft2. While this amount is slightly above the amount claimed, Alderman does not criticize, discredit or otherwise discourage a lower amount of PCM, therefore it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a lower amount of PCM to achieve a predictable result, i.e. a lower amount of insulative property, based on the desired level of insulation in the end use application.)
Regarding the transition temperature of the phase change material, Alderman teaches that it is preferable to use a PCM with a phase change temperature slightly higher than the average temperature of the interior living space (Column 9, Lines 19 – 23). Alderman teaches examples of PCMs include paraffin, such as n-octadecane (Column 2, Lines 43 – 45). As evidenced by Zhang, n-octadecane has a phase change temperature of 28°C (Page 1, Left Column, Paragraph 1). This is considered to be “about 24°C” as required by claim 21.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select a phase change material having a transition temperature such as within the claimed range, because Alderman teaches that it is preferable to use a PCM with a phase change temperature slightly higher than the average temperature of the interior living space and Alderman teaches specific materials, such as n-octadecane, which have a transition temperature within the claimed range.
Regarding the mass-enhanced R-value benefit, one of the phase change materials taught by Alderman are paraffins. Figure 4 of the instant invention shows that a loading of paraffin at 0.1 lb/ft2 provide a R-value benefit of 4 to 7. Since the prior art combination teaches substantially the same structure as disclosed by Applicant, the property of R-value benefit is considered to naturally flow from the product of the prior art combination (and would be expected to fall within the range in the claim), absent evidence otherwise. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. When the structure recited in the prior art reference is substantially identical to that of the claims, claimed properties or functions are presumed to be present. Applicant bears responsibility for proving that the reference composition does not possess the characteristics recited in the claims.
Regarding the claimed R-value of the fibrous insulation component, Alderman teaches that the R value is related to the thickness of the layer and that the R value should be high enough to buffer the heat from variable temperatures (Column 9, Lines 43 – 57). Alderman does not explicitly teach the R-value claimed.
Lipford teaches that fiberglass batt insulation typically has an R-value of 2.9 to 3.8 per inch (Page 2, Last Paragraph) and that attic insulation should be 12 – 16 inches thick for an R-value of R-38 to R-49 (Page 2, Paragraph 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an interior insulation with the claimed R-value because Alderman teaches that the R value should be high enough to buffer the heat from variable temperatures (Column 9, Lines 43 – 57) and Lipford teaches that R-values within the claimed range are predictably suitable for housing insulation applications.
Alderman does not teach:
The phase change material being present in an amount of 15% to 30% by weight of the insulation product
Shi teaches an insulated material comprising a phase change material with an insulating material (Abstract). Shi teaches that these insulative materials can be used as building insulation ([0004]). This is similar to the structure and application of Alderman. Shi teaches that the PCM can be combined with the insulation material in a suitable amount and that a larger amount of PCM may be capable of storing larger amounts of heat but that increased amounts of PCMs may be prone to leakage problems as well as being limited by the pore volume in the insulating material ([0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the claimed amount of PCM to within the claimed ranges. One of ordinary skill would have been motivated based on the desire to provide sufficient PCM for the amount of heat storage desired, based on the end application. It has been held that when the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II).
Alderman teaches that the phase change material layer is provided between a thin layer of insulation and a thick layer of insulation (Column 3, Line 64 – Column 4, Line 3). Alderman does not specifically teach:
The paraffin phase change material positioned about 1 inch to about 2 inches from the first major surface
Shramo teaches a thermal filtering system with an external insulation layer, an internal insulation layer, and a layer of phase change material located in between and thermally in series with the layers of insulation (Abstract). This is similar to the structure of Alderman. Shramo teaches that in an exemplary wall application, the fiberglass insulation may be 1 or 2 inches thick (Column 4, Lines 27 – 33).
It would have been obvious to one of ordinary skill of the art before the effective filing date of the claimed invention to select a thickness for the thin layer of insulation such as the claimed about 1 – 2 inches, because Shramo teaches that the thickness of the insulation was known as a predictably suitable thickness of similar fiberglass insulation layers with a layer of phase-change materials sandwiched in between (Column 4, Lines 27 – 33).
As per claim 2, Alderman teaches:
Wherein the phase change material is a continuous layer (Column 15, Lines 18 – 20: “The PCM solution can be applied uniformly about surface 199.”)
As per claim 3, Alderman teaches:
Wherein the phase change material is a discontinuous layer (Column 15, Lines 18 – 20: “The PCM solution can be applied… in discrete parallel strips along the length of layer 186.”)
As per claim 7, Alderman teaches:
Wherein the fibers are glass fibers (Column 16, Lines 13 – 17: “Fig. 20 illustrates a method 320 wherein a PCM solution 232 in a liquid state is applied directly to glass fibers of a partial batt 237 of fiberglass insulation as the batt of insulation is being fabricated.”)
Conclusion
Applicant's amendment necessitated any 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA N CHANDHOK whose telephone number is (571)272-5780. The examiner can normally be reached on Monday through Friday from 6:30 - 3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA N CHANDHOK/Primary Examiner, Art Unit 1789