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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/16/25 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 21, 30, 39 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al., US 2005/0229504 in view of Schneller et al., US 4,646,498.
Regarding claims 21, 39 and 40:
Bennett discloses a building structure, comprising:
a frame structure (refer to Fig. 1);
a plurality of adjacent structural panels (24) fastened to the frame structure, each structural panel comprising a barrier layer (30) secured to an external facing surface of each structural panel, wherein the structural panel, the external facing barrier layer are pre-formed into an integral two-layer arrangement; and
a seam sealant (140) sealing a joint between the structural panels;
wherein:
each structural panel with the secured barrier layer has a water vapor transmission rate from about 0.7 to about 7 grams/m2/24 hr, as determined by ASTM E96 procedure A (730 F.-50% RH) and/or a water vapor permeance from about 0.1 to about 12 perms, as determined by ASTM E96 procedure B (730 F.-50% RH) and/or each structural panel with the secured barrier layer has a liquid water transmission rate from about 1 to about 28 grams/100 in2/24 hr, via Cobb ring in accordance with ASTM D5795 (para. 0039),
when installed each structural panel with the secured barrier is placed external to the frame structure and fastened securely in place to the frame structure by fasteners extending all the way through the structural panel and the secured barrier and into the structural frame (through indicia 37) , and
wherein in use the installed structural panels with the secured barrier are structural without installing additional structural bracing.
Bennett does not expressly disclose an insulation layer that makes the panel a three-layer panel with the integral insulation layer.
Schneller discloses a building panel (10) having an insulation layer (14) secured to an internal facing surface of a structural panel (12) creating an integral arrangement wherein the integral panel including the insulation layer faces inward toward a frame structure (refer to Fig. 3).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill to bond an insulation layer as suggested by Schneller to the interior of the two layer panel of Bennett creating an integral three layer panel in order to insulate a building surface.
Regarding claim 30:
Bennett in view of Schneller discloses a building structure as set forth in the rejection of claims 21, 39 and 40 set forth above and Bennett further discloses wherein the structural panels include OSB (para. 0025).
Bennett does not expressly disclose wherein the OSB panels exhibit a minimum allowable shear capacity as claimed.
It would have been obvious to one having ordinary skill in the art at the time the invention was made, to contrive any number of desirable ranges for the shear capacity limitation disclosed by Applicant and to design to the structural-rating according to the PS-2-92 performance standard 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. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Refer to MPEP § 2144.05. In the instant case, it would have been obvious to a person of ordinary skill in the art at the time of the invention to construct and test the panel to meet various building codes as required.
Claims 22-29 and 31-38 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett et al., US 2005/0229504 in view of Schneller et al., US 4,646,498, further in view of Fay et al., US 2004/0123539.
Regarding claims 22, 24, 25, 31, 33 and 34:
Schneller discloses wherein the insulation layer has a thickness of ½” to 3” (col. 2, ll. 17-18).
Scheller does not disclose the insulation density or permeance.
Fay discloses an insulation layer having a density of 0.3 pcf to 1.6 pcf, a permeance over 1 to about 5 (para. 0029) and a thickness between 2 and 13 inches, wherein the insulation may be foam, fibrous or other materials (para. 0008 of Fay).
Before the effective filing date of the invention, it would have been obvious to select an insulation as suggested by Fay for the insulation of Scheller in order to provide properties suitable for the application (Background/Summary of Fay e.g. stiffness, high insulation, durability, etc.)
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]."
Regarding claims 23, 26-29, 32 and 35-38:
Fay and Scheller disclose wherein the thermal resistance can be modified by thickness and suggests wherein other properties can be predictably varied and altered as desired.
It would have been obvious to one having ordinary skill in the before the effective filing date of the invention, to contrive any number of desirable ranges for the water absorption, thermal resistance, compressive strength, tensile strength and dimensional stability limitations disclosed by Applicant, 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. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
Response to Arguments
Applicant’s arguments with respect to the claims 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT W HERRING whose telephone number is (571)270-3661. The examiner can normally be reached Monday-Thursday 7:30a-6:00p MT.
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/BRENT W HERRING/Primary Examiner, Art Unit 3633