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 .
Response to Amendment
Amendments to the claims, filed on 7/28/26, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (US 2018/0162107 A1).
Regarding claim 1, Xu teaches a reinforced composite facer comprising a surface layer (440) disposed on another layer (430); wherein the additional layer (430) may comprise a scrim of glass fibers and a thermoplastic or thermoset binder (i.e., a carrier substrate comprising a plurality of glass fibers and a binder composition that binds the plurality of glass fibers together, the carrier substrate having a first carrier surface and a second carrier surface); wherein the surface layer may comprise a scrim and a thermoplastic film or coating on the scrim (i.e., a scrim in contact with the first carrier surface; a thermoplastic coating covering the scrim and contacting the first carrier surface) (abstract, para 62).
With regard to the limitation “wherein the thermoplastic coating adheres the scrim to the carrier substrate wherein the thermoplastic coating extends into the carrier substrate in an amount of 1% to 50% of a thickness of the carrier substrate, and wherein the second carrier surface is free of the thermoplastic coating;” Xu teaches that thermoplastic layers can be heated through rollers and used to attached layers together (para 76); so it would have been obvious to one of ordinary skill in the art at the time of invention to heat and press the layers of Xu to allow the thermoplastic film to bond the two layers. In addition, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the temperature of and pressure applied the rollers to optimize the impregnation or bonding depth of the thermoplastic film to optimize its ability to bond the layers together (i.e., wherein the thermoplastic coating extends into the carrier substrate in an amount of 1% to 50% of a thickness of the carrier substrate, and wherein the second carrier surface is free of the thermoplastic coating).
Regarding claims 2-4, Xu teaches the scrim may comprise glass fibers and/or polymers and be woven (para 62). Xu further teaches is surface layers or scrims may have a basis weight 10 to 300 gsm (i.e., total weight 20 to 600 gsm) (para 12). These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Xu, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claims 5-6, Xu teaches the thermoplastic film or coating may comprise a polyimide or polycarbonate (para 67). With regard to the basis weight of the thermoplastic coating, and again, the carrier substrate, the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that by adjusting the basis weight of the thermoplastic coating and the carrier substrate, the physical and/or mechanical properties (e.g., weight, flexibility or rigidity, moldability, and overall strength) as well as the cost of the composite could be optimized. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the basis weight of the thermoplastic coating and the carrier substrate to optimize the physical and/or mechanical properties as well as the cost of the panel per the required end use or application of the composite.
Xu fails to expressly teach wherein the thermoplastic coating further comprises an additive comprising at least one of a fire retardant, a dye, a pigment, a UV stabilizer, an anti-static agent, or a filler. However, Xu teaches the prepregs and cores may include additional materials or additives to impart desired physical or chemical properties; e.g., one or more dyes, texturizing agents, colorants, viscosity modifiers, smoke suppressants, synergistic materials, lofting agents, particles (i.e., fillers), powders, and biocidal agents (para 70); so, it would have been obvious to one of ordinary skill in the art at the time of invention to use dyes or other additives in the surface layers to achieve a desired color on the surface or a desired property in the surface layer of the composite article.
Regarding claim 7, Xu teaches or would have otherwise rendered obvious to one of ordinary skill in the art at the time of invention the structures and composition of the reinforced composite facer of the instant claims, so it is deemed to possess an average Gurley porosity of 2,000 seconds to 16,000 seconds. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Regarding claim 8, the language of the instant claim is that of functional language or a property obtained during a future use of the composite article. Xu suggests or otherwise renders obvious the structure and composition of the article, so it is deemed to possess said property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Regarding claim 9, Xu teaches a reinforced composite facer comprising a core (410) (i.e., an insulation substrate having a first insulation surface and a second insulation surface), a surface layer (440) disposed on another layer (430); wherein the additional layer (430) may comprise a scrim of glass fibers and a thermoplastic or thermoset binder (i.e., a carrier substrate comprising a plurality of glass fibers and a binder composition that binds the plurality of glass fibers together, the carrier substrate having a first carrier surface and a second carrier surface, wherein the second carrier surface is attached to at least one of the first insulation surface or the second insulation surface); wherein the surface layer may comprise a scrim and a thermoplastic film or coating on the scrim (i.e., a scrim in contact with the first carrier surface; a thermoplastic coating covering the scrim and contacting the first carrier surface) (abstract, para 62).
With regard to the limitation “wherein the thermoplastic coating adheres the scrim to the carrier substrate wherein the thermoplastic coating extends into the carrier substrate in an amount of 1% to 50% of a thickness of the carrier substrate, and wherein the second carrier surface is free of the thermoplastic coating;” Xu teaches that thermoplastic layers can be heated through rollers and used to attached layers together (para 76); so it would have been obvious to one of ordinary skill in the art at the time of invention to heat and press the layers of Xu to allow the thermoplastic film to bond the two layers. In addition, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the temperature of and pressure applied the rollers to optimize the impregnation or bonding depth of the thermoplastic film to optimize its ability to bond the layers together (i.e., wherein the thermoplastic coating extends into the carrier substrate in an amount of 1% to 50% of a thickness of the carrier substrate, and wherein the second carrier surface is free of the thermoplastic coating).
Regarding claim 10, Xu teaches the core (410) may comprise any materials associated with cores such as mineral wool and/or polyurethane foam (para 48, 59, 62, 63) .
It is noted that a change in size, scale, proportionality and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); In Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04[R-1].
A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the prepreg and/or core of Xu with the dimensions (i.e., the thickness of the insulation substrate) based on the prior art's intended application as in the present invention.
Furthermore, the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that by adjusting the thickness of the insulation substrate the physical and/or mechanical properties (e.g., weight, flexibility or rigidity, moldability, and overall strength) as well as the cost of the composite could be optimized. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the thickness of the insulation to optimize the physical and/or mechanical properties as well as the cost of the panel per the required end use or application of the composite.
Regarding claims 11-13, Xu teaches the scrim may comprise glass fibers and/or polymers and be woven (para 62). Xu further teaches is surface layers or scrims may have a basis weight 10 to 300 gsm (i.e., total weight 20 to 600 gsm) (para 12). These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Xu, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claims 14 and 15, Xu teaches the thermoplastic film or coating may comprise a polyimide or polycarbonate (para 67). With regard to the basis weight of the thermoplastic coating, and again, the carrier substrate, the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that by adjusting the basis weight of the thermoplastic coating and the carrier substrate, the physical and/or mechanical properties (e.g., weight, flexibility or rigidity, moldability, and overall strength) as well as the cost of the composite could be optimized. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to adjust the basis weight of the thermoplastic coating and the carrier substrate to optimize the physical and/or mechanical properties as well as the cost of the panel per the required end use or application of the composite.
Xu fails to expressly teach wherein the thermoplastic coating further comprises an additive comprising at least one of a fire retardant, a dye, a pigment, a UV stabilizer, an anti-static agent, or a filler. However, Xu teaches the prepregs and cores may include additional materials or additives to impart desired physical or chemical properties; e.g., one or more dyes, texturizing agents, colorants, viscosity modifiers, smoke suppressants, synergistic materials, lofting agents, particles (i.e., fillers), powders, and biocidal agents (para 70); so, it would have been obvious to one of ordinary skill in the art at the time of invention to use dyes or other additives in the surface layers to achieve a desired color on the surface or a desired property in the surface layer of the composite article.
Regarding claim 16, Xu teaches or would have otherwise rendered obvious to one of ordinary skill in the art at the time of invention the structures and composition of the reinforced composite facer of the instant claims, so it is deemed to possess an average Gurley porosity of 2,000 seconds to 16,000 seconds. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Regarding claim 17, the language of the instant claim is that of functional language or a property of the composite article. Xu suggests or otherwise renders obvious the structure and composition of the article, so it is deemed to possess said property. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Response to Arguments
Applicant’s arguments, see remarks, filed 7/28/26, with respect to the rejection of the instant claims under 35 U.S.C. 103 as being unpatentable over certain teachings of Xu (US 2018/0162107 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of further teachings of Xu (US 2018/0162107 A1) as explained above.
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 NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
