DETAILED ACTION
This Office action is a reply to the RCE filed on 9/1/2026. Currently, claims 1-8, 10-11, 13-19 and 21 are pending. Claims 9, 12, 20 and 22 have been cancelled. No claims have been withdrawn. No new claims have been added.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/1/2026 has been entered.
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 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) 1-2, 4-5, 7-8, 11, 15-16, 18-19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Croasdale (US 20130074431) and further in view of Mabey (US 20180282218).
Claim 1, Moore teaches a fire-resistant wall assembly, comprising:
a multi-component fire-resistant wall assembly (Fig. 7) with an inner side and an outer side (inner side and outer side of the assembly shown in Fig. 7, respectively) and comprising[:]
an interior panel (“type x gypsum” board; Fig. 7) with an inner face and an outer face (inner face and outer face of gypsum board; Fig. 7), said interior panel disposed on the inner side of the wall assembly (Fig. 7);
an exterior panel (10, 20) with an inner face and an outer face (inner face and outer face of 10, 20), wherein the exterior panel comprises a fire-retardant-treated panel with multiple layers of oriented wood strands (the exterior panel comprises a coating 20 that comprises a fire-retardant material [0027]; under the broadest reasonable interpretation, the exterior panel is OSB, which by definition comprises layers of oriented wood strands, as exceedingly broadly claimed [0026]);
a plurality of studs (“studs” Fig. 7) located between the interior panel and the exterior panel (Fig. 7), and affixed to the outer face of the interior panel and the inner face of the exterior panel (Fig. 7);
an outer panel (“exterior cladding” Fig. 7) disposed on the outer side of the fire-resistant wall assembly (Fig. 7);
a WRB layer 30, independent of an insulation layer (under the broadest reasonable interpretation, the WRB layer is applied as a coating, and is separate from and thus independent of an insulation layer, as exceedingly broadly claimed), located between the exterior panel and the outer panel (Fig. 7)
wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame (“Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]).
Moore teaches all the structure of claim 1 as above, but does not teach an insulation layer located between the exterior panel and the outer panel, and does not explicitly state that the 1-hour fire resistance rating is in accordance with ASTM E119.
However, Croasdale teaches a fire-resistant wall assembly, comprising an insulation layer (17; [0042]; Fig. 21) located between an exterior panel (“cladding” which is attached via bracket 66; [0056]; Fig. 21) and an outer panel (“sheathing” such as plywood, oriented strand board, or exterior grade gypsum board 22; [0042]; Fig. 21), said insulation layer comprising mineral wool [0042]. In the event that applicant disagrees that Moore teaches a WRB layer (see beginning of this rejection pertaining to Moore), Croasdale teaches a WRB layer (“weather resistant barrier” [0042]; note shown) that can be attached to the structure [0042]. It is understood that such WRB layer is separate from the insulation layer and thus is independent of the insulation layer, as exceedingly broadly claimed. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the fire-resistant wall assembly of Moore such that an insulation layer comprising mineral wool is located between the exterior panel and the outer panel, independent of a WRB layer, with the reasonable expectation of success of further insulating the building to increase energy efficiency using known means and known materials to meet a variety of governmental and non-governmental energy standards (Croasdale [0003]).
Further, ASTM E119 is a known standard. It is known in the art to design such fire-resistant wall assemblies to be in accordance with ASTM E119. Mabey teaches a fire-resistant wall assembly, wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (“a wall or floor assembly provides more than two hours of fire resistance when tested according to the ASTM-E119 or equivalent”; [0029]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the fire-resistant wall assembly attaining at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119, with the reasonable expectation of success of meeting a known standard to ensure quality, reliability and safety.
Claim 2, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 1, and further teaches wherein the outer panel comprises exterior cladding or siding (Moore under the broadest reasonable interpretation, the exterior cladding constitutes exterior cladding or siding; Fig. 7; or alternatively Croasdale [0056]).
Claim 4, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 1, and further teaches the WRB layer affixed to the outer face of the exterior panel (Moore “the panel is coated with a weather or water resistive barrier WRB 30 of some kind” [0010]; or alternatively Croasdale [0042]).
Claim 5, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 4, and further teaches wherein the WRB layer comprises a polymer-based sheet (Moore the WRB layer nonetheless constitutes a sheet comprising and based on a polymer [0031]).
Claim 7, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 1, and further teaches a plurality of cavities between the plurality of studs (Moore cavities shown in Fig. 7).
Claim 8, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 7, and further teaches wherein one or more of the plurality of cavities contain insulation material (Moore “insulation” Fig. 7).
Claim 11, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 1, and further teaches wherein the interior panel comprises gypsum board (Moore “type x gypsum” Fig. 7).
Claim 15, Moore teaches a fire-resistant wall assembly, comprising:
a multi-component fire-resistant wall assembly (Fig. 7) with an inner side and an outer side (inner side and outer side of the assembly shown in Fig. 7, respectively) and comprising[:]
an interior panel (“type x gypsum” board; Fig. 7) with an inner face and an outer face (inner face and outer face of gypsum board; Fig. 7);
an exterior panel (10, 20) with an inner face and an outer face (inner face and outer face of 10, 20);
a plurality of studs (“studs” Fig. 7) located between the interior panel and the exterior panel (Fig. 7), and affixed to the outer face of the interior panel and the inner face of the exterior panel (Fig. 7);
an outer panel (“exterior cladding”; Fig. 7) disposed on the outer side of the fire-resistant wall assembly (Fig. 7);
a WRB layer 30, independent of an insulation layer (30 is independent of an insulation layer; Fig. 7), located between the exterior panel and the outer panel (Fig. 7);
wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame (“Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]).
Moore does not teach an insulation layer located between the exterior panel and the outer panel, the insulation layer comprising mineral wool, mineral board, ceramic fiber board or combinations thereof, and wherein the exterior panel comprises mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board, and does not explicitly state that the 1-hour fire resistance rating is in accordance with ASTM E119.
However, Croasdale teaches a fire-resistant wall assembly, comprising an insulation layer (17; [0042]; Fig. 21) located between an exterior panel (“cladding” which is attached via bracket 66; [0056]; Fig. 21) and an outer panel (“sheathing” such as plywood, oriented strand board, or exterior grade gypsum board 22; [0042]; Fig. 21), said insulation layer comprising mineral wool [0042]. In the event that applicant disagrees that Moore teaches a WRB layer (see beginning of this rejection pertaining to Moore), Croasdale teaches a WRB layer (“weather resistant barrier” [0042]; note shown) that can be attached to the structure [0042]. It is understood that such WRB layer is separate from the insulation layer and thus is independent of the insulation layer, as exceedingly broadly claimed. Croasdale further teaches the exterior panel 22 comprising mineral board (“gypsum board” constitutes mineral board because it is made of gypsum, which is a naturally occurring mineral). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the fire-resistant wall assembly of Moore such that an insulation layer comprising mineral wool is located between the exterior panel and the outer panel, independent of a WRB layer, the exterior panel comprising mineral board, with the reasonable expectation of success of further insulating the building to increase energy efficiency using known means and known materials to meet a variety of governmental and non-governmental energy standards (Croasdale [0003]).
Further, ASTM E119 is a known standard. It is known in the art to design such fire-resistant wall assemblies to be in accordance with ASTM E119. Mabey teaches a fire-resistant wall assembly, wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (“a wall or floor assembly provides more than two hours of fire resistance when tested according to the ASTM-E119 or equivalent”; [0029]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the fire-resistant wall assembly attaining at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119, with the reasonable expectation of success of meeting a known standard to ensure quality, reliability and safety.
Claim 16, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 1, and further teaches the insulation layer disposed between the exterior panel and a WRB layer (Croasdale [0005] and [0042]).
Claim 18, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 1, and further teaches wherein the insulation layer is affixed to the outer face of the exterior panel (Croasdale insulation layer 17 affixed to outer face of exterior panel 22; Fig. 21), and said insulation layer is in contact with an interior face of the outer panel (Croasdale cladding [0056]).
Claim 19, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 1, and further teaches wherein the fire-resistant wall assembly attains at least a 2-hour fire resistance rating from the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (Moore “Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]; Mabey [0029]).
Claim 21, as modified above, the combination of Moore, Croasdale and Mabey teaches all the limitations of claim 15, and further teaches wherein the fire-resistant wall assembly attains at least a 2-hour fire resistance rating from the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (Moore “Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]; Mabey [0029]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Croasdale (US 20130074431) and Mabey (US 20180282218) and further in view of Bennett et al. (US 20050229504) (‘Bennett’).
Claim 6, Moore, Croasdale and Mabey teach all the limitations of claim 1 as above. Moore does not teach the WRB layer comprising a resin-impregnated paper overlay bonded to the outer face of the exterior panel. However, Bennett teaches a wall assembly comprising a WRB layer affixed to an outer face of an exterior panel, the WRB layer comprising a resin-impregnated paper overlay (32; [0037]; Fig. 3) bonded to the outer face of the exterior panel ([0037]; Fig. 3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using a resin-impregnated paper overlay for the WRB layer bonded to the outer face of the exterior panel, with the reasonable expectation of success of using a known, readily available, structurally equivalent product that is easy to install and control the quality of installation having a consistent thickness, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Croasdale (US 20130074431) and Mabey (US 20180282218) as above and further in view of Taraba et al. (US 5701708) (‘Taraba’).
Claims 13-14, Moore, Croasdale and Mabey teach all the limitations of claim 1 as above. Moore does not teach [claim 13] wherein the interior panel comprises an engineered-wood panel, and [claim 14] wherein the interior panel comprises an OSB panel. However, Taraba teaches a wall assembly, wherein an interior panel comprises an engineered-wood panel or an OSB panel (the inner and outer skins 28 and 30 may be formed of building grade plywood or OSB; col. 3, lines 3-5). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the interior panel comprising an engineered-wood panel or an OSB panel, with the reasonable expectation of success of utilizing known, readily available materials to form the wall assembly, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 1-3, 4-5, 7-8, 10-11 and 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Miks (US 20140345223) and further in view of Mabey (US 20180282218).
Claim 1, Moore teaches a fire-resistant wall assembly, comprising:
a multi-component fire-resistant wall assembly (Fig. 7) with an inner side and an outer side (inner side and outer side of the assembly shown in Fig. 7, respectively) and comprising[:]
an interior panel (“type x gypsum” board; Fig. 7) with an inner face and an outer face (inner face and outer face of gypsum board; Fig. 7), said interior panel disposed on the inner side of the wall assembly (Fig. 7);
an exterior panel (10, 20) with an inner face and an outer face (inner face and outer face of 10, 20), wherein the exterior panel comprises a fire-retardant-treated panel with multiple layers of oriented wood strands (the exterior panel comprises a coating 20 that comprises a fire-retardant material [0027]; under the broadest reasonable interpretation, the exterior panel is OSB, which by definition comprises layers of oriented wood strands, as exceedingly broadly claimed [0026]);
a plurality of studs (“studs” Fig. 7) located between the interior panel and the exterior panel (Fig. 7), and affixed to the outer face of the interior panel and the inner face of the exterior panel (Fig. 7);
an outer panel (“exterior cladding” Fig. 7) disposed on the outer side of the fire-resistant wall assembly (Fig. 7);
a WRB layer 30, independent of an insulation layer (under the broadest reasonable interpretation, the WRB layer is applied as a coating, and is separate from and thus independent of an insulation layer, as exceedingly broadly claimed), located between the exterior panel and the outer panel (Fig. 7)
wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame (“Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]).
Moore teaches all the structure of claim 1 as above, but does not teach an insulation layer located between the exterior panel and the outer panel, and does not explicitly state that the 1-hour fire resistance rating is in accordance with ASTM E119.
However, Miks teaches a fire-resistant wall assembly, comprising an insulation layer (130; [0031]; Fig. 1) located between an exterior panel Fig. 1) and an outer panel (Fig. 1), said insulation layer comprising mineral wool [0031]. In the event that applicant disagrees that Moore teaches a WRB layer (see beginning of this rejection pertaining to Moore), Miks teaches a WRB layer (under the broadest reasonable interpretation, polymeric sealing tape constitutes a WRB layer, as exceedingly broadly claimed; [0033]) that can be attached to the structure ([0033]; Fig. 1). It is understood that such WRB layer is separate from the insulation layer and thus is independent of the insulation layer, as exceedingly broadly claimed. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the fire-resistant wall assembly of Moore such that an insulation layer comprising mineral wool is located between the exterior panel and the outer panel, independent of a WRB layer, with the reasonable expectation of success of further insulating the building to increase energy efficiency using known means to deliver a better seal (Miks [0028]).
Further, ASTM E119 is a known standard. It is known in the art to design such fire-resistant wall assemblies to be in accordance with ASTM E119. Mabey teaches a fire-resistant wall assembly, wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (“a wall or floor assembly provides more than two hours of fire resistance when tested according to the ASTM-E119 or equivalent”; [0029]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the fire-resistant wall assembly attaining at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119, with the reasonable expectation of success of meeting a known standard to ensure quality, reliability and safety.
Claim 2, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches wherein the outer panel comprises exterior cladding or siding (Moore under the broadest reasonable interpretation, the exterior cladding constitutes exterior cladding or siding; Fig. 7; alternatively Miks Fig. 1).
Claim 4, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches the WRB layer affixed to the outer face of the exterior panel (Moore “the panel is coated with a weather or water resistive barrier WRB 30 of some kind” [0010]; or alternatively Miks Fig. 1).
Claim 5, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 4, and further teaches wherein the WRB layer comprises a polymer-based sheet (Moore the WRB layer nonetheless constitutes a sheet comprising and based on a polymer [0031]; alternatively Miks it is understood that 125 is a 3M product made of an elastomeric polymer).
Claim 7, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches a plurality of cavities between the plurality of studs (Moore cavities shown in Fig. 7).
Claim 8, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 7, and further teaches wherein one or more of the plurality of cavities contain insulation material (Moore “insulation” Fig. 7).
Claim 10, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches wherein the insulation layer comprises mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board (Miks “mineral fiber boards” [0031]).
Claim 11, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches wherein the interior panel comprises gypsum board (Moore “type x gypsum” Fig. 7; or Miks [0030]).
Claim 15, Moore teaches a fire-resistant wall assembly, comprising:
a multi-component fire-resistant wall assembly (Fig. 7) with an inner side and an outer side (inner side and outer side of the assembly shown in Fig. 7, respectively) and comprising[:]
an interior panel (“type x gypsum” board; Fig. 7) with an inner face and an outer face (inner face and outer face of gypsum board; Fig. 7);
an exterior panel (10, 20) with an inner face and an outer face (inner face and outer face of 10, 20);
a plurality of studs (“studs” Fig. 7) located between the interior panel and the exterior panel (Fig. 7), and affixed to the outer face of the interior panel and the inner face of the exterior panel (Fig. 7);
an outer panel (“exterior cladding”; Fig. 7) disposed on the outer side of the fire-resistant wall assembly (Fig. 7);
a WRB layer 30, independent of an insulation layer (30 is independent of an insulation layer; Fig. 7), located between the exterior panel and the outer panel (Fig. 7);
wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame (“Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]).
Moore does not teach an insulation layer located between the exterior panel and the outer panel, the insulation layer comprising mineral wool, mineral board, ceramic fiber board, or combinations thereof, wherein the exterior panel comprises mineral board, mineral wool board, mineral fiber board, or mineral bonded wood wool board, and does not explicitly state that the 1-hour fire resistance rating is in accordance with ASTM E119.
However, Miks teaches a fire-resistant wall assembly, comprising an insulation layer (130; [0031]; Fig. 1) located between an exterior panel Fig. 1) and an outer panel (Fig. 1), said insulation layer comprising mineral wool [0031]. In the event that applicant disagrees that Moore teaches a WRB layer (see beginning of this rejection pertaining to Moore), Miks teaches a WRB layer (under the broadest reasonable interpretation, polymeric sealing tape constitutes a WRB layer, as exceedingly broadly claimed; [0033]) that can be attached to the structure ([0033]; Fig. 1). It is understood that such WRB layer is separate from the insulation layer and thus is independent of the insulation layer, as exceedingly broadly claimed. Miks further teaches the exterior panel comprising mineral board (gypsum board; [0031]) It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the fire-resistant wall assembly of Moore such that an insulation layer comprising mineral wool is located between the exterior panel and the outer panel, independent of a WRB layer, the exterior panel comprising mineral board, with the reasonable expectation of success of further insulating the building to increase energy efficiency using known means to deliver a better seal (Miks [0028]).
Further, ASTM E119 is a known standard. It is known in the art to design such fire-resistant wall assemblies to be in accordance with ASTM E119. Mabey teaches a fire-resistant wall assembly, wherein the fire-resistant wall assembly attains at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (“a wall or floor assembly provides more than two hours of fire resistance when tested according to the ASTM-E119 or equivalent”; [0029]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the fire-resistant wall assembly attaining at least a 1-hour fire resistance rating from either the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119, with the reasonable expectation of success of meeting a known standard to ensure quality, reliability and safety.
Claim 16, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches the insulation layer disposed between the exterior panel and a WRB layer (Miks Fig. 1).
Claim 18, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches wherein the insulation layer is affixed to the outer face of the exterior panel (Miks Fig. 1), and said insulation layer is in contact with an interior face of the outer panel (Miks Fig. 1).
Claim 19, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 1, and further teaches wherein the fire-resistant wall assembly attains at least a 2-hour fire resistance rating from the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (Moore “Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]; Mabey [0029]).
Claim 21, as modified above, the combination of Moore, Miks and Mabey teaches all the limitations of claim 15, and further teaches wherein the fire-resistant wall assembly attains at least a 2-hour fire resistance rating from the inner side or the outer side when said side is exposed to flame in accordance with ASTM E119 (Moore “Fire Resistant rating for use in a one or two hour rated assemblies, measured from the inside or the outside” [0010]; Mabey [0029]).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Miks (US 20140345223) and Mabey (US 20180282218) and further in view of Bennett et al. (US 20050229504) (‘Bennett’).
Claim 6, Moore, Miks and Mabey teach all the limitations of claim 1 as above. Moore does not teach the WRB layer comprising a resin-impregnated paper overlay bonded to the outer face of the exterior panel. However, Bennett teaches a wall assembly comprising a WRB layer affixed to an outer face of an exterior panel, the WRB layer comprising a resin-impregnated paper overlay (32; [0037]; Fig. 3) bonded to the outer face of the exterior panel ([0037]; Fig. 3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using a resin-impregnated paper overlay for the WRB layer bonded to the outer face of the exterior panel, with the reasonable expectation of success of using a known, readily available, structurally equivalent product that is easy to install and control the quality of installation having a consistent thickness, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (US 20170210098) (‘Moore’) in view of Miks (US 20140345223) and Mabey (US 20180282218) as above and further in view of Taraba et al. (US 5701708) (‘Taraba’).
Claims 13-14, Moore, Miks and Mabey teach all the limitations of claim 1 as above. Moore does not teach [claim 13] wherein the interior panel comprises an engineered-wood panel, and [claim 14] wherein the interior panel comprises an OSB panel. However, Taraba teaches a wall assembly, wherein an interior panel comprises an engineered-wood panel or an OSB panel (the inner and outer skins 28 and 30 may be formed of building grade plywood or OSB; col. 3, lines 3-5). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the interior panel comprising an engineered-wood panel or an OSB panel, with the reasonable expectation of success of utilizing known, readily available materials to form the wall assembly, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, specifically Moore et al. (US 20170210098) (‘Moore’), Grant et al. (US 20150361653) (‘Grant’), Croasdale (US 20130074431), Miks (US 20140345223), Mabey (US 20180282218), Bennett et al. (US 20050229504) (‘Bennett’) and Taraba et al. (US 5701708) (‘Taraba’) does not teach or disclose, alone or in combination, all the elements and features of the claimed invention as a whole, including inter alia wherein the insulation layer is disposed on an exterior face of the WRB layer, and disposed between the WRB layer and the outer panel, with the WRB layer disposed between the insulation layer and the exterior panel, as recited in a combination of claims 1, 4 and 17 (note that claim 17 depends from claim 4, which depends from claim 1). None of the above references or any of the cited prior art references teach the position, orientation and arrangement of the insulation layer, the WRB layer, the outer panel and the exterior panel as claimed. It would have been beyond the level of ordinary skill to modify or combine any of the references to arrive at the claimed invention.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-8, 10-11, 13-19 and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Grant et al. (US 20150361653) (‘Grant’) teaches substantially all the limitations of claims 1 and 15, except for the claimed insulation material and ASTM standard. Knight et al. (US 9856655) teaches a fire resistant wall assembly comprising mineral wool insulation and a WRB layer comprising a tape. Balinski (US 3702044) teaches a fire resistant wall assembly that meets ASTM E119.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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