DETAILED ACTION
The Examiner acknowledges Claims 1-20 have been amended.
Response to Arguments
Applicant’s arguments and amendments with respect to the Claim Objections have been fully considered and are persuasive. The Objections of Claims 1 and 7 have been withdrawn.
Applicant’s arguments and amendments with respect to the Specification Objection have been fully considered and are persuasive. The Objection of the Specification has been withdrawn.
Applicant’s arguments and amendments with respect to the Drawing Objections have been fully considered and are persuasive. The Objection of the Drawings has been withdrawn.
Applicant’s arguments and amendments with respect to the 112 rejections have been fully considered and are persuasive. The 112 rejections of Claims 1, 2, 7, 8, 14, 16 and 17 have has been withdrawn.
Applicant’s arguments and amendments with respect to the Prior Art rejections have been considered but are moot because the amendments have necessitated a new grounds of rejection.
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.
Claim 5 is 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 Specification does not set forth “a first stabilizer implement”.
Claim 6 is 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 Specification does not set forth “a second stabilizer implement”.
Claim 16 is 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 Specification does not set forth “a stabilizer implement”.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 9,057,199 to Gillman in view of Australian Patent # 2016200595 to Forte et al.
Regarding claim 1, Gillman teaches in Figure 2, a structural insulated building panel (Column 2, Lines 26-27) comprising: an insulated core section (13) [expanded polystyrene layer (Column 2, Line 48)], the insulated core section (13) comprises an insulating material including polymers [expanded polystyrene layer (Column 2, Line 48)]; an outer cover/skin part (11/14) [exterior surface board (Column 2, Lines 47-48) and interior surface board (Column 2, Line 49)], the outer cover/skin part (11/14) configured to provide a fire-resistant wall (Column 3, Lines 5-6); a space or cavity constituent [for phenolic resin sheet 12 (Column 2, Line 36)] between the insulating core section (13) and the outer cover/skin part (11); a spacer assembly portion (12) [phenolic resin sheet (Column 2, Line 36)], the spacer assembly portion (12) configured to create the space or cavity constituent between the insulating core (13) and the outer cover/skin part (11). Gillman does not show connecting the structural insulated building panel to any building structure. However, Forte teaches in Figure 10, a wall panel connector (20) [tie down rod (Paragraph 0061)], the wall panel connector (20) is operable for connecting a panel (10) to a concrete floor slab (28) (Paragraph 0059); a cross-panel connector (52) C-channel (Paragraph 0070), wherein the cross-panel connector (52) is configured to engage an outer cover/skin part (12/14) [spaced apart boards (Paragraph 0048)] to the panel (10) which would contain the spacer assembly portion; and wherein the cross-panel connector (52) is further configured to engage the outer cover/skin part (12/14) to an insulating core (16) (Paragraph 0048) through the panel (10) that would contain the spacer assembly portion. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the structural insulated building panel of Gillman with the tie down arrangement of Forte with a reasonable expectation of success because Forte teaches the tie down rod of the tie down system ties the panel down to the slab (Paragraph 0070).
Regarding claim 2, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, the spacer assembly portion (12) provides a space or cavity between the insulating core section (13) and the outer cover/skin part (11) but does not teach a second spacer assembly portion. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have first and second spacer assembly portions since it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, a second spacer assembly portion would in order to provide further fire-resistance for the wall (Column 3, Lines 5-6).
Regarding claim 3, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, the space or cavity constituent [for phenolic resin sheet 12 (Column 2, Line 36)] comprises a bonder cavity for receiving structural insulated building panel strengthening materials [phenolic resin sheet 12 (Column 2, Line 36)].
Regarding claim 4, Gillman in view of Forte teach a structural insulated building panel but they do not teach a second member of the space or cavity constituent comprises a second bonder cavity for receiving a second strengthening material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have first and second spacers with space or cavity constituents comprising a second bonder cavity for receiving a second strengthening material since it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, a second spacer with a second space or cavity constituent comprising a second bonder cavity for receiving a second strengthening material would provide further fire-resistance for the wall (Column 3, Lines 5-6).
Regarding claim 5, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, a first stabilizer implement (12) into engagement with the bonder cavity for additional support.
Regarding claim 6, Gillman in view of Forte teach a structural insulated building panel but they do not teach a second stabilizer implement into engagement with the second bonder cavity. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have first and second stabilizer implements since it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, a second stabilizer implement would provide further fire-resistance for the wall (Column 3, Lines 5-6).
Regarding claim 7, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figures 2 and 5, a first cross inter-panel connector [connecting spline (Column 4, Line 40)], wherein the first cross inter-panel connector [connecting spline] is configured to be operable for interconnecting multiple panels (7 and 8) to form a wall (Column 2, Lines 29-32).
Regarding claim 8, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figures 2 and 5, a second cross inter-panel connector [connecting spline (Column 4, Line 40)], wherein the second cross inter-panel connector [connecting spline] is configured to be operable for interconnecting multiple panels (7 and 8) to form a wall (Column 2, Lines 29-32).
Regarding claim 9, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, the space or cavity constituent [for phenolic resin sheet 12 (Column 2, Line 36)] comprises a composite material [phenolic resin sheet (Column 2, Line 36)].
Regarding claim 10, the Examiner notes that this claim would be considered to be a product-by-process claim due to the limitation “cured” and “installed by a tilting process”. The patentability of the product does not depend on its method of production. Determination of patentability is based on the product itself. See MPEP 2113. “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 11, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Forte teaches in Figure 10, the cross-panel connector (52) is operable for post tensioning the panel (10) by clamping (Paragraph 0070) a nut (54) against the cross-panel connector (52). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the structural insulated building panel of Gillman with the tie down arrangement of Forte with a reasonable expectation of success because Forte teaches the clamping of the nut ties the panel down to the slab (Paragraph 0070).
Regarding claim 12, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, the outer cover/skin part (11/14) comprises a first outer cover or exterior sheeting (11) engaging a surface area of the bonder cavity for the phenolic resin sheet (12).
Regarding claim 13, Gillman in view of Forte teach a structural insulated building panel with first and second spacer assemblies. Furthermore, Gillman teaches in Figure 2, the outer cover/skin part (11/14) further comprises a second outer cover or exterior sheeting (14) engaging a surface area of the bonder cavity of claim 4.
Regarding claim 14, Gillman teaches in Figure 2, a structural insulated building panel (Column 2, Lines 26-27) comprising: an insulated core section [for expanded polystyrene layer 13 (Column 2, Line 48)], wherein the insulated core section is configured to receive an insulating material (13) [polystyrene layer (Column 2, Line 48)]; a first outer cover or exterior sheeting (11) [exterior surface board (Column 2, Lines 47-48)]; a second outer cover or sheeting (14) [interior surface board (Column 2, Line 49)]; a first bonder cavity [for phenolic resin sheet 12 (Column 2, Line 36)]; wherein the first bonder cavity is configured to be operable for receiving structural insulated building panel strengthening materials [phenolic resin sheet 12 (Column 2, Line 36)]; a first spacer assembly (12) [phenolic resin sheet (Column 2, Line 36)], the first spacer assembly (12) is configured to create the first bonder cavity between the first outer cover or exterior sheeting (11) and the insulting core section (13). Gillman does not show connecting the structural insulated building panel to any building structure. However, Forte teaches in Figure 10, a wall panel connector (20) [tie down rod (Paragraph 0061)], the wall panel connector (20) is operable for connecting a panel (10) to a concrete floor slab (28) (Paragraph 0059); a cross-panel connector (52) C-channel (Paragraph 0070), wherein the cross-panel connector (52) is configured to engage a first outer cover or exterior sheeting (12) and a second outer cover or exterior sheeting (14) [spaced apart boards (Paragraph 0048)]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the structural insulated building panel of Gillman with the tie down arrangement of Forte with a reasonable expectation of success because Forte teaches the tie down rod of the tie down system ties the panel down to the slab (Paragraph 0070). Neither Gillman nor Forte teach a second bonder cavity or a second spacer assembly portion. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have first and second spacer assembly portions since it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, a second spacer assembly portion would in order to provide further fire-resistance for the wall (Column 3, Lines 5-6).
Regarding claim 15, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Forte teaches in Figure 10, a first stabilizer [fastener (Paragraph 0070) on the left] that is configured to engage the panel (10) for additional support [fastening (Paragraph 0070)]; and a second stabilizer [fastener (Paragraph 0070) on the right] that is configured to engage the panel (10) for additional support [fastening (Paragraph 0070)]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the structural insulated building panel of Gillman with the tie down arrangement of Forte with a reasonable expectation of success because Forte teaches the stabilizer implements fasten the cross-panel connector to the panel (Paragraph 0070).
Regarding claim 16, Gillman teaches in Figure 2, a building panel (Column 2, Lines 26-27) comprising: an insulating core section [for expanded polystyrene layer 13 (Column 2, Line 48)], wherein the insulating core section is configured to receive an insulating material [expanded polystyrene layer (Column 2, Line 48)]; a bonder cavity [for phenolic resin sheet 12 (Column 2, Line 36)] for receiving building panel strengthening materials [phenolic resin sheet 12 (Column 2, Line 36)]; a spacer assembly portion [for the phenolic resin sheet 12 (Column 2, Line 36)], wherein the spacer assembly portion is configured to create the bonder cavity [for the phenolic resin sheet 12 (Column 2, Line 36)]. Gillman does not show connecting the structural insulated building panel to any building structure. However, Forte teaches in Figure 10, a wall panel connector (20) [tie down rod (Paragraph 0061)], the wall panel connector (20) is operable for connecting a panel (10) to a concrete floor slab (28) (Paragraph 0059); a cross-panel connector (52) C-channel (Paragraph 0070), an outer cover or exterior sheeting (12 and 14) [spaced apart boards (Paragraph 0048)], the outer cover or exterior sheeting (12 and 14) is engaged to an insulating core (16) (Paragraph 0048) through the cross-panel connector (52); and a stabilizer implement [fastener (Paragraph 0070)] that is configured to engage the panel for additional support [fastening (Paragraph 0070)]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the structural insulated building panel of Gillman with the tie down arrangement of Forte with a reasonable expectation of success because Forte teaches the tie down rod of the tie down system ties the panel down to the slab (Paragraph 0070).
Regarding claim 17, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, the spacer assembly portion [for the phenolic resin sheet 12 (Column 2, Line 36)] comprises a first spacer assembly [for the phenolic resin sheet 12 (Column 2, Line 36)], and an outer cover or exterior sheeting (11/14) [exterior surface board (Column 2, Lines 47-48) and interior surface board (Column 2, Line 49)] comprises a first exterior sheeting (11) and a second exterior sheeting (14), the bonder cavity [for the phenolic resin sheet 12 (Column 2, Line 36)] comprises a first bonder cavity [for the phenolic resin sheet 12 (Column 2, Line 36)], and wherein: the first spacer assembly [for the phenolic resin sheet 12 (Column 2, Line 36)] is configured to create the first bonder cavity [for the phenolic resin sheet 12 (Column 2, Line 36)] between the first outer cover or exterior sheeting (11) and the insulating core section (13). Gillman does not teach a second spacer assembly. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have first and second spacers as well as a second bonder cavity since it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, a second spacer assembly would in order to provide further fire-resistance for the wall (Column 3, Lines 5-6).
Regarding claim 18, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, the bonder cavity [for the phenolic resin sheet 12 (Column 2, Line 36)] comprises a first bonder cavity [for the phenolic resin sheet 12 (Column 2, Line 36)] that is operable for receiving building panel strengthening materials [phenolic resin sheet 12 (Column 2, Line 36)]. Gillman does not teach a second bonder cavity for receiving a second building panel strengthening material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a second bonder cavity for receiving a second building panel strengthening material since it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, a second bonder cavity with a second building panel strengthening material would in order to provide further fire-resistance for the wall (Column 3, Lines 5-6).
Regarding claim 19, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Gillman teaches in Figure 2, the outer cover or exterior sheeting (11/14) comprises: a first exterior sheeting (11) [exterior surface board (Column 2, Lines 47-48)], the first exterior sheeting (11) is engaged to the first bonder cavity [for the phenolic resin sheet 12 (Column 2, Line 36)], and a second exterior sheeting (14) [interior surface board (Column 2, Line 49)]. Gillman does not teach a second bonder cavity engaged to the second exterior sheeting. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a second bonder cavity since it has been held that mere duplication of the essential working parts of a device involves only routine skilled the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. In the instant case, a second bonder cavity would provide further fire-resistance for the wall (Column 3, Lines 5-6).
Regarding claim 20, Gillman in view of Forte teach a structural insulated building panel. Furthermore, Forte teaches in Figure 10, the stabilizer implement [fastener (Paragraph 0070)] comprises: a first stabilizer [on the left] that is configured to engage the panel (10) for additional support [fastening (Paragraph 0070)]; and a second stabilizer [on the right] that is configured to engage the panel (10) for additional support [fastening (Paragraph 0070)]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the structural insulated building panel of Gillman with the tie down arrangement of Forte with a reasonable expectation of success because Forte teaches the stabilizer implements fasten the cross-panel connector to the panel (Paragraph 0070).
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 ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635