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 .
DETAILED ACTION
This is a final office action in response to the amendment filed 8/19/2025.
Claims 1, 8 and 14 are amended, and claims 7 and 13 are canceled.
Claims 1-6, 8-12 and 14-20 are pending and examined.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4-6, 8-9, 11-12 and 14-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lapp(U.S. Pat. Appl. Publ. 2024/0167264, E. F. D. 3/21/2021; cited on PTO 892).
Regarding claims 1-2 and 6, Lapp discloses an insulated building panel(see Fig. 2) for forming a portion of a building envelope of a building(see Fig. 1), the panel comprising:
an insulated core(220) comprised of expanded polystyrene(see para. [0008));
an interior sheathing(230) made of gypsum(see para. [0008]) attached to a first side of the insulated core(see Fig. 2), the interior sheathing for being installed facing an interior of the building(one of the sides faces the interior and meets the claim limitation, see Fig. 1); and
an exterior sheathing(230, see paras. [0008] and [0051]) made of gypsum(see para. [0008] and [0051]) attached to a second side of the insulated core(see Fig. 2), the exterior sheathing for being installed facing an exterior of the building(the other of the sides faces the exterior and meets the claim limitation, see Fig. 1), wherein the first side is opposite the second side(see Fig. 2), and wherein the insulated core is for providing a thermal break between the interior sheathing and the exterior sheathing(the material of the core and sheathing inherently provides for a thermal break meeting the claim limitation),
wherein the panel is rectangular comprising two female edges and two male edges(the panel has opposite edges considered the female and male edges, the terms “female” and “male” lend no structural limitation to the claim and are considered met by the mating edges shown in Fig. 1, the term “male edge” is not considered to require a protrusion and the term “female edge” is not considered to require a cavity/groove, the edges can be attached and meets the functional claim limitation), wherein each of the female edges is opposite one of the male edges, wherein each of the male edges is for cooperatively attaching to one of the female edges of another panel, and wherein each of the female edges is for cooperatively attaching to a male edge of another panel(the edges are opposite and meet the claim limitation as shown in Fig. 1; the use of tongue and groove attachment elements are known in the construction art and would be obvious for a skilled artisan if the claim were to include the use of tongue and grooves on the edges).
Regarding claims 8-9 and 12, Lapp discloses a system for constructing an insulated building wall, the system comprising:
a plurality of building panels(as discussed above regarding claims 1-2), wherein a first level of building panels are for installation below a frost line(the panels can be placed below the frost line meeting the functional claim limitation), and wherein each panel is for installation adjacent to and attaching to one or more other building panels to form the insulated building wall(see Figs. 1-2).
Regarding claims 4-5 and 11, Lapp discloses the panel of claims 1 and 8, wherein the insulated core comprises one or more internal steel studs(210, see paras. [0046] and [0047)).
Regarding claim 14, Lapp discloses the system of claim 13, wherein adjacent ones of the panels(200, 600, see Fig. 10) are attached at the edges using fasteners(620, see para. [0073]).
Regarding claim 15, Lapp discloses the system of claim 8, further comprising strapping(240, see para. [0008] and Fig. 2) attached to the exterior sheathing of the panels, and cladding(245) is attached to the strapping(see para. [0008] and Fig. 2).
Regarding claim 16, Lapp discloses the system of claim 8, further comprising: a top plate(adjacent 1210, see Fig. 20) installed along atop edge of the insulated building wall; and a bottom plate(1315, see para. [0076] and Fig. 13) installed along a bottom edge of the insulated building wall(see Fig. 13).
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.
Claims 1, 4-6, 8, 11-12, 14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Babcock(6,256,960; cited on PTO 892).
Regarding claims 1 and 6, Babcock discloses an insulated building panel(21, see Fig. 3) for forming a portion of a building envelope of a building(see Fig. 1), the panel comprising:
an insulated core(21);
an interior sheathing(27) made of cement board(see column 6, lines 5-24) attached to a first side of the insulated core(see Fig. 3), the interior sheathing for being installed facing an interior of the building(one of the sides faces the interior and meets the claim limitation, see Fig. 1); and
an exterior sheathing(28) made of cement board(see column 6, lines 5-24]) attached to a second side of the insulated core(see Fig. 3), the exterior sheathing for being installed facing an exterior of the building(the other of the sides faces the exterior and meets the claim limitation, see Fig. 1), wherein the first side is opposite the second side(see Fig. 3), and wherein the insulated core is for providing a thermal break between the interior sheathing and the exterior sheathing(the material of the core and sheathing inherently provides for a thermal break meeting the claim limitation),
wherein the panel is rectangular comprising two female edges and two male edges(the panel has opposite edges considered the female and male edges, the terms “female” and “male” lend no structural limitation to the claim and are considered met by the mating edges shown in Fig. 1, the term “male edge” is not considered to require a protrusion and the term “female edge” is not considered to require a cavity/groove, the edges can be attached and meets the functional claim limitation), wherein each of the female edges is opposite one of the male edges, wherein each of the male edges is for cooperatively attaching to one of the female edges of another panel, and wherein each of the female edges is for cooperatively attaching to a male edge of another panel(the edges are opposite and meet the claim limitation as shown in Fig. 1; the use of tongue and groove attachment elements are known in the construction art and would be obvious for a skilled artisan if the claim were to include the use of tongue and grooves on the edges).
Regarding claims 8 and 12, Babcock discloses a system for constructing an insulated building wall, the system comprising:
a plurality of building panels(as discussed above regarding claim 1), wherein a first level of building panels are for installation below a frost line(the panels can be placed below the frost line meeting the functional claim limitation), and wherein each panel is for installation adjacent to and attaching to one or more other building panels to form the insulated building wall(see Figs. 1 and 3).
Regarding claims 4-5 and 11, Babcock discloses the panel of claims 1 and 8, wherein the insulated core comprises one or more internal steel studs(29, see Fig. 3).
Regarding claim 14, Babcock discloses the system of claim 13, wherein adjacent ones of the panels(200, 600, see Fig. 10) are attached the edges using fasteners(620, see para. [0073]).
Regarding claim 16, Babcock discloses the system of claim 8, further comprising: a top plate(52, see Fig. 6) installed along a top edge of the insulated building wall; and a bottom plate(13, see Fig. 3) installed along a bottom edge of the insulated building wall(see Fig. 3).
Claims 17 and 19 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Konopka(U.S. Pat. Appl. Publ. 2004/0003550; cited on PTO 892).
Konopka discloses panels below a frost line(see Figs. 3-4 and 8) and panels above the first level, with a top plate(see Fig. 6).
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 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lapp in view of Busatta(U.S. Pat. Appl. Publ. 2024/0191498, E. F. D. 4/21/2021; cited on PTO 892).
Lapp discloses the panel of claims 1-2 and 8-9 but lacks the use of graphite with the core.
Busatta discloses a panel having polystyrene comprising graphite(see para. [0006}).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have substituted the material of the panel of Lapp with polystyrene and graphite, as disclosed by Busatta given that KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 82 USPQ.2d 1385 (Fed. Cir. 2005), cert. granted, 547 U.S. __ (2006) has found that the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claims 2-3 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Babcock in view of Sullivan(U.S. Pat. Appl. Publ. 2014/0069605; cited on PTO 892) or Busatta.
Babcock discloses the panel of claims 1 and 8, wherein the core is polyurethane, but lacks the use of polystyrene with a graphite in the core.
Applicant’s disclosure lends no criticality to any additives in the core(see paras. [0006] and [0053)).
Sullivan discloses a panel made of polystyrene and graphite added to the panel.
Busatta discloses the panel with EPS and graphite.
Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have substituted the material of the panel of Babcock with polystyrene and graphite, as disclosed by Sullivan or Busatta given that KSR International Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct. 1727, 82 USPQ.2d 1385 (Fed. Cir. 2005), cert. granted, 547 U.S. (2006) has found that the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Babcock in view of Moore(6,170,220; cited on PTO 892).
Babcock discloses the system of claim 8, but lacks the use of strapping and cladding.
Moore discloses panels having strapping and cladding attached thereto(see column 5, lines 44-55).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have provided the panels/system of Babcock with strapping and cladding, such as disclosed by Moore, with a reasonable degree of success, in order to have covered the panels of Babcock to finish the building wall given the intended use of the system and design requirements thereof.
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lapp in view of Konopke.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Babcock in view of Konopke.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Babcock and Konopke, as applied to claims 15-16 above, and further in view in view of Moore.
Lapp and Babcock disclose the panel and system of the previous claims with the panels capable of being used below a frost line, but lacks the panels used below a frost line.
Konopka discloses panels used in a building with the panels used below the frost line.
Moore discloses strapping and cladding.
It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to have provided the system and panels of Lapp and Babcock and Moore with the panels below a frost line, such as disclosed by Konopka, with a reasonable degree of success, to enhance the thermal characteristics of the system given the intended use of the panel, area of use and design requirements thereof.
Response to Amendment
Applicant’s amendment has overcome the previous drawing objection, 112 rejections, and 102 rejections of claims 7 and 13.
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.
Response to Arguments
Applicant's arguments filed 8/19/2025 have been fully considered.
Applicant’s argument regarding the terms “male edge” and female edge” are not persuasive and have been discussed above and considered to not require a specific protrusion or groove to be met by the references. The use of protrusions and mating grooves is considered well known in the construction are and would be obvious to a skilled artisan if the terms were changed to define a protrusion and groove rather than male and female edge.
Applicant’s argument regarding the frost line of the Konokpa refence is not persuasive. A shown in Fig. 6, panels 11 and 12 are both above and below the frost line therefore meeting the claim limitations.
Applicant’s arguments regarding the drawing objection, 112 rejections and claim s7 and 13 are mott given that the objection/rejections have been withdrawn.
Applicant’s arguments regarding the dependent claims are discussed above in the discussion of male/female edges and frost line.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETH A. STEPHAN whose telephone number is (571)272-1851. The examiner can normally be reached M-F 8a-4:30p.
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BETH A. STEPHAN
Primary Examiner
Art Unit 3633
/Beth A Stephan/