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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the one or more subfloor panels and a finish flooring material (claim 24), the finish flooring material is a hardwood flooring material, engineered flooring material, natural stone tile, porcelain tile, or linoleum (claim 25), multiple subfloor panels are present and are joined together with a tongue and groove joint (claim 26), multiple subfloor panels are present and are sealed between the panels with a seam sealant (claim 27), the seam sealant is a tape (claim 28), and at least one subfloor fastener positioned to fasten the floor assembly to an underlying framing (claim 29) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 21 recites that “the vapor retarder comprises…a first resin” and “the lignocellulosic material comprises…a second resin.” However, claim 1, from which claim 21 depends already discloses a first resin of the lignocellulosic material and a second resin of the vapor retarder (see lines 3-4 of claim 1). Therefore it is unclear if the vapor retarded is required to have yet another resin (“first resin”) and the lignocellulosic material is required to have yet another resin (“second resin”).
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) 1-5, 9-11, 14-16, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Publication No. 2005/0229504 to Bennett et al. (“Bennett”).
Regarding claim 1, Bennett discloses a panel 20, capable of use as a subfloor panel, comprising a lignocellulosic material (par 0029) suitable for use as a subfloor and an integrated vapor retarder 30 coextensive to at least one surface of the lignocellulosic material, wherein the lignocellulosic material comprises a first resin (par 0024) and the vapor retarder 30 comprises a second resin (par 0037).
Regarding claim 2, Bennett discloses that the subfloor panel has a permeance of from about 0.1 to about 1.0 perms, as measured per ASTM E96-22 water method (Method B) (par 0039 discloses 0.1-12 perms and has values within the claimed range).
Regarding claim 3, Bennett discloses that the subfloor panel has a permeance of from about 0.1 to about 1.0 perms, as measured per ASTM E96-22 desiccant method (Method A) (par 0039 discloses 0.7-7 perms and has values within the claimed range).
Regarding claim 4, Bennett discloses that the subfloor panel has a permeance of from about 0.1 to about 1.0 perms, as measured per ASTM E96-22 desiccant method (Method A) (par 0039 discloses 0.7-7 perms) and/or ASTM E96-22 water method (Method B) (par 0039 discloses 0.1-12 perms and has values within the claimed range).
Regarding claim 5, Bennett discloses that the lignocellulosic material comprises oriented strand board (OSB) (par 0029-par 0030).
Regarding claim 9, Bennett discloses that the vapor retarder 30 is integrated to a top surface of the lignocellulosic material, a bottom surface of the lignocellulosic material, or both the top and bottom surfaces of the lignocellulosic material.
Regarding claim 10, Bennett discloses that the top surface of the lignocellulosic material or the bottom surface of the lignocellulosic material is sanded (par 0056).
Regarding claim 11, Bennett discloses that the vapor retarder comprises paper 32 (par 0037).
Regarding claim 14, Bennett discloses that the vapor retarder comprises a screen imprint (par 0062).
Regarding claim 15, Bennett discloses that the paper 32 has a paper basis weight of from about 50 to about 150 pounds per 100 square feet (sq. ft.) (par 0037 discloses 48-255lbs/msf and has values within the claimed range).
Regarding claim 16, Bennett discloses that the subfloor panel has a density of from about 38 to about 50 pounds per feet cubed (lbs./ft3) (par 0096 discloses density of 41.5lbs/cubic feet and has values within the claimed range).
Regarding claim 18, Bennett discloses that the subfloor panel has a wet coefficient of friction of from about 0.6 to about 1.3 (claim 40 discloses a wet coefficient of friction of 0.8-1.1 and has values within the claimed range).
Regarding claim 19, Bennett discloses that the subfloor panel has a dry coefficient of friction of about 0.9 or higher (claim 40 discloses a dry coefficient of friction of at least 0.8 which includes values over 0.8 including 0.9).
Regarding claim 20, Bennett discloses that the subfloor panel has a thickness of from about 0.650 to about 1.175 inches (par 0073 discloses a thickness of 0.25-1.25 inches and has values within the claimed range).
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of U.S. Publication No. 2022/0371219 to Yadama et al. (“Yadama”).
Regarding claim 6, Bennett does not disclose that the first resin comprises phenyl formaldehyde (PF).
Yadama discloses a resin comprising phenyl formaldehyde is commonly used to bind lignocellulosic material in oriented strand boards or panels made of wood strands (par 0059).
It would have been obvious to one having ordinary skill in the art at the time of invention to use phenyl formaldehyde, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). This would predictably allow use of a readily available resin.
Claim(s) 7, 8, 13, and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of U.S. Publication No. 2018/0179754 to Karnicki et al. (“Karnicki”).
Regarding claims 7 and 8, Bennett does not disclose that the first resin comprises isocyanate comprising polymeric methylene diphenyl diisocyanate (pMDI).
Karnicki comprises an OSB panel wherein a first resin comprises isocyanate comprising polymeric methylene diphenyl diisocyanate (pMDI) (Karnicki, par 0106 and claim 4).
It would have been obvious to one having ordinary skill in the art at the time of invention to use an isocyanate comprising polymeric methylene diphenyl diisocyanate, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). This would predictably allow use of a readily available resin.
Regarding claim 13, Bennett discloses that the second resin is a phenol-formaldehyde resin (par 0037), but does not expressly disclose that the first resin and second resin comprise different resins.
Karnicki comprises an OSB panel wherein a first resin comprises isocyanate comprising polymeric methylene diphenyl diisocyanate (pMDI) (Karnicki, par 0106 and claim 4).
It would have been obvious to one having ordinary skill in the art at the time of invention to use an isocyanate comprising polymeric methylene diphenyl diisocyanate, which is different from the second resin, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). This would predictably allow use of a readily available resin.
Regarding claim 21, Bennett discloses that the vapor retarder 30 comprises paper 32 and a first resin (par 0032), further wherein the lignocellulosic material comprises oriented strand board (pars 0024-0025, 0029), which further comprises a second resin (par 0024), further wherein the subfloor panel has a permeance of from about 0.1 to about 1.0 perms, as measured per ASTM E96-22 water method (Method B) (par 0039 discloses 0.1-12 perms and has values within the claimed range), but does not disclose that the second resin comprises pMDI.
Karnicki comprises an OSB panel wherein a resin comprises isocyanate comprising polymeric methylene diphenyl diisocyanate (pMDI) (Karnicki, par 0106 and claim 4).
It would have been obvious to one having ordinary skill in the art at the time of invention to use an isocyanate comprising polymeric methylene diphenyl diisocyanate, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). This would predictably allow use of a readily available resin.
Regarding claim 22, Bennett discloses that the vapor retarder 30 comprises paper 32 and a first resin (par 0032), further wherein the lignocellulosic material comprises oriented strand board (pars 0024-0025, 0029), which further comprises a second resin (par 0024), further wherein the subfloor panel has a permeance of from about 0.1 to about 1.0 perms, as measured per ASTM E96-22 desiccant method (Method A) (par 0039 discloses 0.7-7 perms and has values within the claimed range), but does not disclose that the second resin comprises pMDI.
Karnicki comprises an OSB panel wherein a resin comprises isocyanate comprising polymeric methylene diphenyl diisocyanate (pMDI) (Karnicki, par 0106 and claim 4).
It would have been obvious to one having ordinary skill in the art at the time of invention to use an isocyanate comprising polymeric methylene diphenyl diisocyanate, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). This would predictably allow use of a readily available resin.
Regarding claim 23, Bennett discloses that the vapor retarder 30 comprises paper 32 and a first resin (par 0032), further wherein the lignocellulosic material comprises oriented strand board (pars 0024-0025, 0029), which further comprises a second resin (par 0024), further wherein the subfloor panel has a permeance of from about 0.1 to about 1.0 perms, as measured per ASTM E96-22 desiccant method (Method A) (par 0039 discloses 0.7-7 perms and has values within the claimed range) and/or ASTM E96-22 water method (Method B) (par 0039 discloses 0.1-12 perms and has values within the claimed range).
Karnicki comprises an OSB panel wherein a resin comprises isocyanate comprising polymeric methylene diphenyl diisocyanate (pMDI) (Karnicki, par 0106 and claim 4).
It would have been obvious to one having ordinary skill in the art at the time of invention to use an isocyanate comprising polymeric methylene diphenyl diisocyanate, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). This would predictably allow use of a readily available resin.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of U.S. Publication No. 2016/0271923 to Marques Da Silva Macedo et al. (“Marques”).
Regarding claim 12, Bennett does not disclose that the vapor retarder further comprises an ultraviolet (UV) stabilizer.
Marques discloses a composite panel wherein a vapor retarder further comprises an ultraviolet (UV) stabilizer (par 002).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the panel of Bennett to have the vapor retarder further comprises an ultraviolet (UV) stabilizer taught in Marques with a reasonable expectation of success because it would predictably inhibit degradation of the panel from UV radiation.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of U.S. Publication No. 2008/028632 to Sleeman (“Sleeman”).
Regarding claim 17, Bennett does not disclose that the subfloor panel has a modulus of elasticity of from about 0.4×106 to about 1.2×106 pounds per square inch (psi).
Sleeman discloses an OSB composite panel with a modulus of elasticity of from about 0.5×106 to about 0.7×106 pounds per square inch (psi) (Sleeman par 0011) which is within the range of 0.4×106 to about 1.2×106 pounds per square inch (psi).
It would have been obvious to one having ordinary skill in the art at the time of invention to use a material with a modulus of elasticity of from about 0.4×106 to about 1.2×106 pounds per square inch (psi), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). This would predictably allow use of a readily available resin.
Claim(s) 24-27 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of U.S. Publication No. 2010/0154333 to Peek et al. (“Peek”).
Regarding claim 24, Bennet discloses the subfloor panels of claim 1, but does not disclose a finish flooring material.
Peek discloses placing finished flooring on a subfloor (Peek par 0002, 0033) to create a finished floor of a structure.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the panel of Bennett to have a finishing flooring material as taught in Peek with a reasonable expectation of success because it would predictably create a finished floor structure.
Regarding claim 25, Bennet in view of Peek discloses that the finish flooring material is a hardwood flooring material, engineered flooring material, natural stone tile, porcelain tile, or linoleum (Peek par 0002, 0033).
Regarding claim 26, Bennet in view of Peek does not disclose multiple subfloor panels are present and are joined together with a tongue and groove joint.
Peek further discloses that subfloor panels (Peek 105) can be joined together with a tongue and groove to allow individual panels to transfer loads to adjacent panels between the span of the joists (Peek, par 0031).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the panel of Bennett to have multiple subfloor panels present and are joined together with a tongue and groove joint as taught in Peek with a reasonable expectation of success because it would predictably allow individual panels to transfer loads to adjacent panels between the span of the joists.
Regarding claim 27, Bennet in view of Peek does not disclose multiple subfloor panels are present and are sealed between the panels with a seam sealant.
Peek further discloses that subfloor panels (Peek 105) can be joined together and are sealed between the panels with a seam sealant to add strength and stiffness to the floor structure (Peek, par 0033).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the panel of Bennett to have multiple subfloor panels present and are sealed between the panels with a seam sealant as taught in Peek with a reasonable expectation of success because it would predictably add strength and stiffness to the floor structure.
Regarding claim 29, Bennet in view of Peek does not disclose at least one subfloor fastener positioned to fasten the floor assembly to an underlying framing.
Peek further discloses at least one subfloor fastener positioned to fasten the floor assembly to an underlying framing (Peek, par 0007).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the panel of Bennett to have at least one subfloor fastener positioned to fasten the floor assembly to an underlying framing as taught in Peek with a reasonable expectation of success because it would predictably secure the panels in place.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennet in view of Peek as applied to claim 23 above, and further in view of U.S. Publication No. 2018/0010328 to Tauferner (“Tauferner”).
Regarding claim 28, Bennet in view of Peek does not disclose that the seam sealant is a tape.
Tauferner discloses a building assembly wherein a seam between two panels is sealed with a tape (Tauferner 154) to facilitate sealing any gap between two panels and improve water resistance along the seam (Tauferner par 0077).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the panel of Bennett to have the seam sealant be a tape as taught in Tauferner with a reasonable expectation of success because it would predictably facilitate sealing any gap between two panels and improve water resistance along the seam.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
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/CHRISTINE T CAJILIG/Primary Examiner, Art Unit 3633