DETAILED ACTION
This is a non-final Office Action on the merits for U.S. App. 18/196,299. Receipt of the RCE, amendments, and arguments filed on 02/26/2026 is acknowledged.
Claims 1-10 and 22-26 are pending.
Claims 11-21 are cancelled.
Claims 1-10 and 22-26 are examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/26/2026 has been entered.
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, 25, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clark et al. (U.S. Publication 2012/0011793).
Regarding claim 1, Clark et al. disclose a structural member (see figure 1), comprising:
two elongated flange members (#20) composed of solid wood (see claim 3) and arranged spaced apart from one another a predetermined distance (see figure 1); and
an insulation material (#22) arranged in a space between the two elongated flange members (see figure 1), wherein
the insulation material adheres to each of the two elongated flange members (see paragraph 9, where the insulation material #22 is to adhere to the surfaces of the flange members through the additional surface area between such elements),
the insulation material has a density of at least 6 lb/ft3 (paragraph 35 discloses the insulation material #22 has a density of 106 kg/m3, which equates to 6.6 lb/ft3 and thus within the range as defined),
the insulation material forms a solid elongated member between the two elongated flange members (see figure 1, where the insulation material is solid since it is filled without any gaps between the members #20),
the solid elongated insulation member occupies the entirety of the volume between the interior faces of the elongated flange members (see figures 1-3, where only the insulation material #22 extends between the interior faces of the members #20), and
the two elongated flange members and the insulation form a composite structural member (see figure 1, where the elements come together to form a structural member and thus a composite structural member).
Regarding claim 25, Clark et al. disclose the insulation material is a densified foam formed in a pressurized mold cavity that confines expansion of foam to form the densified foam (In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. the insulation material with a density greater than 6 lbs/ft3, does not depend on its method of production, i.e. the insulation material is formed in a pressurized mold cavity. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).). Clark et al. teach the use of a foam with a density within the range as defined and which foam is configured to be formed as defined and thus anticipates such limitations as broadly defined.).
Regarding claim 26, Clark et al. disclose the solid elongated insulation member forms a continuous insulated thermal break between the two elongated flange members (see paragraph 26 and figure 1).
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) 2-10 are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al. in view of Ettinger (U.S. Publication 2016/0138267).
Regarding claim 2, Clark et al. disclose that polyurethane can be used for the insulation material. However, Clark et al. do not specifically disclose such a polyurethane material is a two-part polyurethane material. It is highly well known in the art, as evidenced by Ettinger, that foam stud walls can be constructed using polyurethane foam studs #100, where the density of such a foam can be between 5 and 40 lbs per cubic foot and such polyurethane can be made from a two part polyurethane material. See paragraph 24. Therefore, it would have been obvious before the effective filing date of the claimed invention to have used a two-part polyurethane material for the insulation material of Clark et al., as taught in Ettinger, in order to provide the insulation material with specific strength and insulation properties as needed by the end user and also 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, 125 USPQ 416 (CCPA 1960).
Regarding claim 3, Clark et al. in view of Ettinger render obvious the two-part material is a mixture of VORACOR CD 2105 polyol and VORACOR CE 108 Isocyanate materials (Ettinger teaches in paragraph 9 that such a polyurethane foam is made by mixing isocyanate with a polyol blend. Though Ettinger does not disclose the specific tradename of the materials used to form such foam, such VORACOR materials are known materials used in the art and not the sole, patentable subject matter of the present invention. As taught in Ettinger, the quantities of the components of such two part polyurethanes can be varied in order to provide the density, and thus strength and rigidity, of the structural member as needed and thus it would have been obvious to have used the VORACOR trademarked products from Dow to form the two part polyurethane foam of the prior art in order to use well known materials to form such a foam and also 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, 125 USPQ 416 (CCPA 1960).).
Regarding claim 4, Clark et al. in view of Ettinger render obvious a ratio of the two parts of the polyurethan foam are from 1:2 to 2:1 (Ettinger teaches that such two part polyurethane foams are constructed from a blend with polyols and an isocyanate in a ratio by weight of approximately 1:1, with other ratios possible. See paragraphs 9 and 39. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the polyurethane foam of Clark et al. with a 1 to 1 ratio for the two parts, as taught in Ettinger, in order to use common ratios for such two part materials while also providing the foam to the densities, strength, and thermal characteristics as needed by the end user.).
Regarding claim 5, Clark et al. in view of Ettinger render obvious the structural member is capable of withstanding a bending load of at least 1,000 lb. applied to an eight foot long portion of the structural member in a direction passing through a first one of the two elongated flange members, then through the insulation material, and then through the second one of the two elongated flange members (Paragraph 41 of Clark et al. disclose the tensile strength of the structural member can be 580 kPa. Ettinger also disclose that the density of the foam affects the strength and rigidity of such a structural member as well, where the tensile strength of such foam studs can be as high as 8,500 psi. See paragraphs 22 and 55. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the structural member of Clark et al. in view of Ettinger to be able to withstand a bending load of at least 1,000 lbs., such as by increasing the density of the foam and/or size or material of the wood flanges of the structural element, in order to meet the final use requirements for such a structural member while balancing the costs of construction of such structural members and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Such load values are known to be based on size, material type, and density of such structural members and thus one of ordinary skill in the art has the ability to choose the size and strength of the structural member needed to support their final assembly.).
Regarding claim 6, Clark et al. in view of Ettinger render obvious the structural member is capable of withstanding a bending load of at least 1,000 lb. applied to an eight foot long portion of the structural member in a direction passing through a first one of the two elongated flange members, then through the insulation material, and then through the second one of the two elongated flange members (Paragraph 41 of Clark et al. disclose the tensile strength of the structural member can be 580 kPa. Ettinger also disclose that the density of the foam affects the strength and rigidity of such a structural member as well, where the tensile strength of such foam studs can be as high as 8,500 psi. See paragraphs 22 and 55. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the structural member of Clark et al. in view of Ettinger to be able to withstand a bending load of at least 1,000 lbs., such as by increasing the density of the foam and/or size or material of the wood flanges of the structural element, in order to meet the final use requirements for such a structural member while balancing the costs of construction of such structural members and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Such load values are known to be based on size, material type, and density of such structural members and thus one of ordinary skill in the art has the ability to choose the size and strength of the structural member needed to support their final assembly.).
Regarding claim 7, Clark et al. in view of Ettinger render obvious the structural member is capable of withstanding a compressive load along a longitudinal axis of the structural member of 3,500 lbs. or more (Paragraph 41 of Clark et al. disclose the tensile strength of the structural member can be 580 kPa. Ettinger also discloses that the density of the foam affects the strength and rigidity of such a structural member as well, where the tensile strength of such foam studs can be as high as 8,500 psi. See paragraphs 22 and 55. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the structural member of Clark et al. in view of Ettinger to be able to withstand a compressive load of at least 3,500 lbs., such as by increasing the density of the foam and/or size or material of the wood flanges of the structural element, in order to meet the final use requirements for such a structural member while balancing the costs of construction of such structural members and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Such load values are known to be based on size, material type, and density of such structural members and thus one of ordinary skill in the art has the ability to choose the size and strength of the structural member needed to support their final assembly.).
Regarding claim 8, Clark et al. in view of Ettinger render obvious the structural member is capable of withstanding a compressive load along a longitudinal axis of the structural member of 3,500 lbs. or more (Paragraph 41 of Clark et al. disclose the tensile strength of the structural member can be 580 kPa. Ettinger also discloses that the density of the foam affects the strength and rigidity of such a structural member as well, where the tensile strength of such foam studs can be as high as 8,500 psi. See paragraphs 22 and 55. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the structural member of Clark et al. in view of Ettinger to be able to withstand a compressive load of at least 3,500 lbs., such as by increasing the density of the foam and/or size or material of the wood flanges of the structural element, in order to meet the final use requirements for such a structural member while balancing the costs of construction of such structural members and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Such load values are known to be based on size, material type, and density of such structural members and thus one of ordinary skill in the art has the ability to choose the size and strength of the structural member needed to support their final assembly.).
Regarding claim 9, Clark et al. in view of Ettinger render obvious the structural member is capable of withstanding a bending moment of 900 ft-lbs. or more (Paragraph 41 of Clark et al. disclose the tensile strength of the structural member can be 580 kPa. Ettinger also discloses that the density of the foam affects the strength and rigidity of such a structural member as well, where the tensile strength of such foam studs can be as high as 8,500 psi. See paragraphs 22 and 55. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the structural member of Clark et al. in view of Ettinger to be able to withstand a bending moment of 900 lb-ft, such as by increasing the density of the foam and/or size or material of the wood flanges of the structural element, in order to meet the final use requirements for such a structural member while balancing the costs of construction of such structural members and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Such load values are known to be based on size, material type, and density of such structural members and thus one of ordinary skill in the art has the ability to choose the size and strength of the structural member needed to support their final assembly.).
Regarding claim 10, Clark et al. in view of Ettinger render obvious the structural member is capable of withstanding a bending moment of 900 ft-lbs. or more Paragraph 41 of Clark et al. disclose the tensile strength of the structural member can be 580 kPa. Ettinger also discloses that the density of the foam affects the strength and rigidity of such a structural member as well, where the tensile strength of such foam studs can be as high as 8,500 psi. See paragraphs 22 and 55. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the structural member of Clark et al. in view of Ettinger to be able to withstand a bending moment of 900 lb-ft, such as by increasing the density of the foam and/or size or material of the wood flanges of the structural element, in order to meet the final use requirements for such a structural member while balancing the costs of construction of such structural members and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Such load values are known to be based on size, material type, and density of such structural members and thus one of ordinary skill in the art has the ability to choose the size and strength of the structural member needed to support their final assembly.).
Claim(s) 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al. in view of Ettinger and USDA (Smith et al., History of Yard Lumber Size Standards, Forest Products Laboratory Forest Service USDA, Sept. 1964 (obtained from https://www.synthmind.com/miscpub_6409.pdf)).
Regarding claim 22, Clark et al. disclose the flanges can comprise of 1.5 inch by 1.5 inch cross sections in paragraph 25, but does not specifically disclose the depth is 1.625 inches. Paragraph 56 of Ettinger disclose the density and cross section thickness of the polyurethane studs can be changed and utilized in order to meet or exceed the structural properties of wood studs. Furthermore, as taught by UDSA, in 1906, lumber manufacturers adopted nominal sizes for 2 x 4s to be 1 5/8 x 3 5/8 inches after the cutting and finishing process, where such a standard was changed to the 1.5 x 3.5 inch actual dimensions used today around the year 1964. See pages 4, 5, and 21. Thus, in order to construct structural components of Clark et al. to sizes used in pre-1960s homes which use pre-1964 nominal sizes, it would have been obvious before the effective filing date of the claimed invention to have constructed the depth of the flanges of Clark et al. to be 1.625 inches, in order to construct such studs to the same actual sizes of such studs used in pre-1964 homes which use the same depth studs and repair or change such studs out during renovations or repairs and also in order to optimize such studs to have dimensions, strength, and rigidity as needed by the end user.
Regarding claims 23 and 24, Clark et al. disclose the flange members #20 can be spaced 0.5, 2.5, or 4.5 inches apart and thus the insulation material #22 would comprise of a width of 0.5, 2.5, or 4.5 inches. See paragraph 25. Furthermore, if the cuts within the interior surfaces of the flange members #20 are cut to 0.25 inches and such members #20 are spaced 2 inches from one another as depicted in figure 4, such an insulation would thus comprise of a width of 2.5 inches at its maximum. However, Clark et al. do not disclose the depth for the insulation is 1.625 inches as defined. Paragraph 56 of Ettinger disclose the density and cross section thickness of the polyurethane studs can be changed and utilized in order to meet or exceed the structural properties of wood studs. Furthermore, as taught by UDSA, in 1906, lumber manufacturers adopted nominal sizes for 2 x 4s to be 1 5/8 x 3 5/8 inches after the cutting and finishing process, where such a standard was changed to the 1.5 x 3.5 inch actual dimensions used today around the year 1964. See pages 4, 5, and 21. Thus, in order to construct structural components of Clark et al. to sizes used in pre-1960s homes which use pre-1964 nominal sizes, it would have been obvious before the effective filing date of the claimed invention to have constructed the depth of the insulation of Clark et al. to be 1.625 inches, in order to construct such studs to the same actual sizes of such studs used in pre-1964 homes which use the same depth studs and repair or change such studs out during renovations or repairs and also in order to optimize such studs to have dimensions, strength, and rigidity as needed by the end user.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 and 22-26 have been considered but are moot because Applicant’s amendments to the claims required the use of a different primary reference and rejection than previously used.
Conclusion
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635