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 .
Withdrawn Rejections
The 35 U.S.C. 102(a)(1) rejection of claims 1 and 12-17 as anticipated by EP ‘671 of record in the previous Office Action mailed on 6/10/2025 has been withdrawn due to Applicant's amendment filed on 11/10/2025.
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, 3-8 and 12-17 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. The new limitation “preformed into an integral bonded multilayer arrangement” is deemed new matter. The Specification, as originally filed, does not provide support for this new limitation.
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.
Claims 1, 3, 4 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over EP2319671A1 [hereinafter EP ‘671] in view of Xiao et al. (CN105984185) [hereinafter Xiao].
Regarding claims 1, 3 and 4, EP ‘671 discloses a fire-resistant integrated panel or board (Fig. 3), comprising a base substrate layer, comprising one or more layers (layers 2, 3 and 4) of manufactured-wood strands (OSB; paragraphs [0015], [0018] and [0021]), the base substrate layer with an upper surface and a lower surface, and a first fire-resistant laminate layer with an upper surface and a lower surface (layer 5), the first fire-resistant laminate layer disposed on the upper surface of the base substrate layer (Fig. 3), comprising one or more of a fire-resistant woven fabric and a fire-resistant nonwoven fabric (paragraphs [0008-0010]), wherein the first fire-resistant laminate layer is a single layer (layer 5) and is inherently both flame-spread resistant and burn-through resistant, since it includes glass fibers and provides significantly increased fire resistance (paragraph [0009]), a second fire-resistant laminate layer (6) affixed to the lower surface of the base substrate layer, comprising a woven or nonwoven fabric (paragraphs [0008-0010]), wherein the second fire-resistant laminate layer is inherently both flame-spread resistant and burn-through resistant, since it includes glass fibers and provides significantly increased fire resistance (paragraph [0009]), wherein the base substrate layer, the first fire-resistant layer, and the second fire-resistant layer are preformed into an integral bonded multilayer arrangement (paragraphs [0010] and [0020]).
EP ‘671 fails to teach a fines layer adjacent to the upper surface or the lower surface of the first fire-resistant laminate layer.
Xiao teaches that it is well known in the OSB art to have a fines layer located between the OSB substrate layer and a finished coating layer in order to improve the smoothness of the surface of the OSB (see abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a fines layer between the OSB substrate layer and the first fire-resistant laminate layer in EP ‘671 as suggested by Xiao in order to improve the smoothness of the OSB board, if so desired.
Furthermore, it is to be noted that claim 1 defines the product by how the product was made. The limitation “preformed" is deemed a process limitation. Thus, claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited step implies bonding the first fire resistant layer, the fines layer, the second fire-resistant layer and the base substrate layer together into an integral bonded multilayer arrangement. As shown above, EP ‘671 in view of Xiao suggest such a product. The method of forming the product is not germane to the issue of patentability of the product itself. MPEP 2113.
Regarding claim 12, EP ‘671 teaches the base substrate layer comprising at least three layers of oriented manufactured-wood strands, including one or more core layers (Fig. 3, layers 2, 3 and 4).
Regarding claim 13, EP ‘671 teaches one or more layers of the at least three layers being treated with fire-resistant chemicals (paragraph [0020]).
Regarding claim 14, the first fire-resistant laminate layer of EP ‘671 would inherently resist leach of the fire-resistant chemicals from the base substrate layer, since the fire-resistant laminate layer comprises one or more of a fire-resistant woven fabric and a fire-resistant nonwoven fabric (paragraphs [0008-0010] and [0020]).
Regarding claim 15, the first fire-resistant laminate layer (layer 5) disclosed in EP ‘671 is inherently a structural reinforcement layer configured to provide structural support to the board, since the fire-resistant laminate layer comprises one or more of a fire-resistant woven fabric and a fire-resistant nonwoven fabric (paragraphs [0008-0010] and [0020]).
Regarding claim 16, the first fire-resistant laminate layer disclosed in EP ‘671 inherently is a structural reinforcement layer configured to increase the structural integrity of the panel or board when exposed to fire, since the fire-resistant laminate layer comprises one or more of a fire-resistant woven fabric and a fire-resistant nonwoven fabric (paragraphs [0008-0010] and [0020]).
Regarding claim 17, the first fire-resistant laminate layer disclosed in EP ‘671 inherently is a structural reinforcement layer configured to prevent or reduce cracking and/or splitting of the panel or board when exposed to fire, since the fire-resistant laminate layer comprises one or more of a fire-resistant woven fabric and a fire-resistant nonwoven fabric (paragraphs [0008-0010] and [0020]).
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over EP ‘671 in view Xiao as applied to claim 1 above, and further in view of Johnson et al. (US 2022/0098859) [hereinafter Johnson].
EP ‘671 in view of Xiao teaches the claimed fire-resistant integrated panel or board as shown above.
However, EP ‘671 fails to teach an outermost layer comprising a weather-resistant and/or water-resistant barrier and that comprises a resin-impregnated paper overlay.
Johnson teaches a fire-rated structural OSB panel that includes an outermost weather-resistant and/or water-resistant barrier including a resin-impregnated paper overlay for the purpose of providing an effective water resistive barrier that resists bulk water (paragraphs [0016] and [0032]).
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 panel or board in EP ‘671 to include an outermost weather-resistant and/or water-resistant barrier including a resin-impregnated paper overlay as suggested by Johnson in order to provide the panel with a water resistive barrier that can resist bulk water, if so desired.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
Applicant argues that Kronotec does not disclose a fire-resistant layer that is both flame-spread resistant and burn-through resistant. Kronotec refers to flame retardants being added. Flame retardants slow the propagation of flame across the surface of a material, i.e., "flame spread", by delaying ignition, and do not address burn-through. Kronotec does not mention burn-through.
This argument is not deemed persuasive. Kronotec (EP ‘671) teaches the first fire-resistant laminate layer and the second fire-resistant laminate layer comprising nonwoven fiberglass which is substantially identical to that of the claimed first and second fire-resistant laminate layers. Thus, the first and second fire-resistant laminate layers in Kronotec inherently are both burn-through resistant and flame spread resistant, since they both include fiberglass.
Furthermore, as shown in the 103 rejection above, Xiao teaches that it is well known in the OSB art to have a fines layer located between the OSB substrate layer and a finished coating layer in order to improve the smoothness of the surface of the OSB (see abstract).Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a fines layer between the OSB substrate layer and the first fire-resistant laminate layer in EP ‘671 as suggested by Xiao in order to improve the smoothness of the OSB board, if so desired.
In view of the foregoing, claim 1 is unpatentable over Kronotec (EP ‘671) in view of Xiao.
Conclusion
Applicant's amendment necessitated the 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 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 CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Catherine A. Simone/Primary Examiner, Art Unit 1781
CATHERINE A. SIMONE
Examiner
Art Unit 1781