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.
Invitation for an Examiner Interview
If, upon review, Applicant believes anything contained herein is inaccurate or unclear the Examiner encourages Applicant to schedule a telephonic interview.
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.
Claim(s) 1-7, 17, and 19 is/are under 35 U.S.C. 103 as being unpatentable over Merrick (US20200270871 – previously of record) in view of Moore (US20170210098).
In reference to claim 1:
Merrick discloses a method of producing a fire-resistant integrated structural sheathing panel (paras 0008, 0019, 0026-0032), comprising the steps of:
producing wood strands (para 0003 disclosing OSB);
providing in-process treated wood element layers (para 0003 disclosing the OSB is treated for resistance to flame spread, ignition, and combustion, Fig. 1 numeral 2 showing “In-process treated wood element layers”);
forming, in a production line, a mat with one or more layers from said treated wood strands, said mat comprising a top surface and bottom surface (para 0003, Fig. 1 numeral 2 showing “In-process treated wood element layers”);
applying a first burn-through resistant coating layer to the top surface of the mat (para 0021; Fig. 1 showing the in fines layer 4);
applying a first resin-impregnated paper overlay to an upper side of the burn-through resistant coating layer opposite the top surface of the mat (para 0026; Fig. 1 showing resin-impregnated performance overlay 6);
applying, in said production line using a production press, heat and pressure to the mat, burn-through resistant coating and resin-impregnated paper overlay to form a board with a first surface and a second surface, wherein the first surface comprises the first burn-through resistant coating layer and the first paper overlay (paras 0020 and 0025).
Merrick does not explicitly disclose the wood strands are treated with fire-resistant chemicals or additives, or both. However, a rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007) (See MPEP 2143 and 2143.02). As applied to the instant application, Moore teaches fire-rated structural sheathing, such as OSB or plywood, comprising a weather resistive barrier (abstract). Moore further teaches treating some or all of the wood strands, alone or in combination with further surface applied treatment, to obtain a fire-rated structural sheathing (para 0011, claim 12). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of Merrick with the strand treatment of Moore because all of the claimed elements are known in the prior art and the combination yields predictable results, e.g. the sheathing is fire resistant through the thickness of the OSB or plywood.
In reference to claim 2:
In addition to the discussion of claim 1, above, Merrick further discloses applying a second resin-impregnated paper overlay to the bottom surface of the mat (para 0027).
In reference to claim 3:
In addition to the discussion of claim 1, above, Merrick does not explicitly disclose wherein the first resin-impregnated paper overlay is configured to prevent leaching of the fire-resistant chemicals or additives from the board. However, it is the Examiner’s position that the first resin-impregnated paper overlay, as disclosed by Merrick, would prevent leaching of the fire-resistant chemicals or additives from the board to the extent required by the broadest reasonable interpretation of the claim. See MPEP 2111.
In reference to claim 4:
In addition to the discussion of claim 2, above, Merrick does not explicitly disclose wherein the second resin-impregnated paper overlay is configured to prevent leaching of the fire-resistant chemicals or additives from the board. However, it is the Examiner’s position that the second resin-impregnated paper overlay, as disclosed by Merrick, would prevent leaching of the fire-resistant chemicals or additives from the board to the extent required by the broadest reasonable interpretation of the claim. See MPEP 2111.
In reference to claim 5:
In addition to the discussion of claim 1, above, Merrick further discloses wherein the fire-resistant chemicals or additives comprise a boron compound (para 0022).
In reference to claim 6:
In addition to the discussion of claim 1, above, Merrick further discloses wherein the burn-through resistant coating comprises an intumescent coating (paras 0033-0037).
In reference to claim 7:
In addition to the discussion of claim 1, above, Merrick further discloses wherein the board is an oriented-strand board (para 0019).
In reference to claim 17:
Merrick discloses a method of producing a fire-resistant integrated structural sheathing panel, comprising the steps of:
producing wood strands (para 0003 disclosing OSB);
providing in-process treated wood element layers (para 0003 disclosing the OSB is treated for resistance to flame spread, ignition, and combustion, Fig. 1 numeral 2 showing “In-process treated wood element layers”);
forming, in a production line, a mat with one or more layers from said treated wood strands, flakes or chips, said mat comprising a top surface and bottom surface (para 0025);
applying a first fire-resistant coating layer to the top surface of the mat (Fig. 1 numeral 4)
applying a first weather-resistant overlay to an upper side of the burn-through resistant coating layer opposite the top surface of the mat (para 0027 disclosing the product “may be protected with a coating or laminate 8, typically applied post-manufacture“, emphasis added, “embedment of the protective finish into one or more of a siding surfaces enables the finish to be protected from damage during installation and in-service weather exposure”); and
applying, in said production line using a production press, heat and pressure to the mat, burn-through resistant coating and resin-impregnated paper overlay to form a board with a first surface and a second surface, wherein the first surface comprises the first burn-through resistant coating layer and the first weather-resistant overlay (paras 0020 and 0025).
Merrick does not explicitly disclose the wood strands are treated with fire-resistant chemicals or additives, or both. However, a rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007) (See MPEP 2143 and 2143.02). As applied to the instant application, Moore teaches fire-rated structural sheathing, such as OSB or plywood, comprising a weather resistive barrier (abstract). Moore further teaches treating some or all of the wood strands, alone or in combination with further surface applied treatment, to obtain a fire-rated structural sheathing (para 0011, claim 12). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of Merrick with the strand treatment of Moore because all of the claimed elements are known in the prior art and the combination yields predictable results, e.g. the sheathing is fire resistant through the thickness of the OSB or plywood.
In reference to claim 19:
In addition to the discussion of claim 18, above, Merrick further discloses wherein the first weather-resistant overlay is a resin-impregnated paper overlay (paras 0026-0027).
Claim(s) 9-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merrick in view of Robinson (US5723020 – previously of record) and Moore.
In reference to claim 9:
Merrick discloses a method of producing a fire-resistant integrated structural sheathing panel (paras 0008, 0019, 0026-0032), comprising the steps of:
producing wood strands (para 0003 disclosing OSB);
providing in-process treated wood element layers (para 0003 disclosing the OSB is treated for resistance to flame spread, ignition, and combustion, Fig. 1 numeral 2 showing “In-process treated wood element layers”);
forming, in a production line, a mat with one or more layers from said treated wood strands, said mat comprising a top surface and bottom surface (para 0025);
applying a first fire-resistant coating layer to the top surface of the mat (Fig. 1 numeral 4);
applying a first resin-impregnated paper overlay over the burn-through resistant coating layer on the top surface of the mat (Fig. 1 numeral 6); and
applying, in said production line using a production press, heat and pressure to the mat, first fire-resistant coating layer, first burn-through resistant coating and first resin-impregnated paper overlay to form a board with a first surface and a second surface, wherein the first surface comprises the first fire-resistant coating layer, the first burn-through resistant coating layer and the first paper overlay (paras 0020 and 0025).
Merrick does not explicitly disclose the wood strands are treated with fire-resistant chemicals or additives, or both. However, a rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007) (See MPEP 2143 and 2143.02). As applied to the instant application, Moore teaches fire-rated structural sheathing, such as OSB or plywood, comprising a weather resistive barrier (abstract). Moore further teaches treating some or all of the wood strands, alone or in combination with further surface applied treatment, to obtain a fire-rated structural sheathing (para 0011, claim 12). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of Merrick with the strand treatment of Moore because all of the claimed elements are known in the prior art and the combination yields predictable results, e.g. the sheathing is fire resistant through the thickness of the OSB or plywood.
As discussed above, Merrick discloses a decorative or protective resin-impregnated performance overlay (para 0026). Merrick further discloses examples of the decorative or protective resin-impregnated performance overlay are those from Robinson (See Merrick para 0026). Merrick fails to explicitly disclose applying a first burn-through resistant coating layer over the first fire-resistant coating on the top surface of the mat. However, this would have been obvious in view of Robinson. Robinson teaches a fire-retardant saturating kraft paper useful in the production of high-pressure laminated materials (col 1 ln 9-15). Robinson further teaches producing a fire-retardant laminate comprising an ATH treated layer having a further coating of sodium borate (the term “with a decorative layer of melamine resin-impregnated paper surface (col 7 ln 56-62) wherein a burn-through coating layer is applied between the first fire-resistant coating layer and the first resin-impregnated paper overlay (claim 8). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize the 2 layer laminate of Robinson as the impregnated performance overlay of Merrick because Merrick specifically states the laminate is useable in the method of Merrick.
In reference to claim 10:
In addition to the discussion of claim 9, above, Merrick further discloses applying a second resin-impregnated paper overlay to the bottom surface of the mat (para 0027).
In reference to claim 11:
In addition to the discussion of claim 9, above, Merrick does not explicitly disclose wherein the first resin-impregnated paper overlay is configured to prevent leaching of the fire-resistant chemicals or additives from the board. However, it is the Examiner’s position that the first resin-impregnated paper overlay, as disclosed by Merrick, would prevent leaching of the fire-resistant chemicals or additives from the board to the extent required by the broadest reasonable interpretation of the claim. See MPEP 2111.
In reference to claim 12:
In addition to the discussion of claim 10, above, Merrick does not explicitly disclose wherein the second resin-impregnated paper overlay is configured to prevent leaching of the fire-resistant chemicals or additives from the board. However, it is the Examiner’s position that the second resin-impregnated paper overlay, as disclosed by Merrick, would prevent leaching of the fire-resistant chemicals or additives from the board to the extent required by the broadest reasonable interpretation of the claim. See MPEP 2111.
In reference to claim 13:
In addition to the discussion of claim 9, above, Merrick further discloses wherein the first fire resistant coating comprises intumescent coating (paras 0033-0037).
In reference to claim 14:
In addition to the discussion of claim 9, above, Merrick further discloses wherein the burn-through resistant coating comprises an intumescent coating (paras 0033-0037).
In reference to claim 15:
In addition to the discussion of claim 9, above, Merrick further discloses wherein the board is an oriented-strand board (para 0019).
Response to Arguments
Applicant’s arguments, see page 10 lines 4-9, filed 08/04/2025, with respect to the rejection(s) of claim(s) 1 and 17, and dependents thereof, under 35 U.S.C. §102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Moore (US20170210098).
Applicant’s arguments, see page 12 last paragraph, filed 08/04/2025, with respect to the rejection(s) of claim(s) 9-15 under 35 U.S.C. §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Moore (US20170210098).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW L SWANSON whose telephone number is (571)272-1724. The examiner can normally be reached M-Th 0800-1900 and every other Friday 0800-1600.
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/ANDREW L SWANSON/Examiner, Art Unit 1745