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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-17 in the reply filed on 3/6/26 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/6/26.
Claim Rejections - 35 USC § 102
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.
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.
(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 and 9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Xu (US 2018/0162107 A1).
Regarding claim 1, Xu teaches a reinforced composite facer (e.g., composite) comprising a carrier substrate (105) (e.g, prepreg or core) having a first carrier surface and a second carrier surface; a surface layer (110) (e.g., scrim) in contact with the first carrier surface; and a thermoplastic coating covering the scrim and contacting the first carrier surface, wherein the thermoplastic coating adheres the scrim to the carrier substrate (e.g., the surface layer is heated to melt or soften the sheath material to increase adhesion to the core layer or prepreg) (abstract, para 17-19, 42, 45, 79-80; figs 1a, 12-13).
Regarding claim 9, Xu teaches an insulation assembly comprising an insulation substrate (730) (e.g, prepreg or core) having a first insulation surface and a second insulation surface; and a reinforced composite facer, wherein the reinforced composite facer comprises a carrier substrate (710) (e.g, prepreg or core) having a first carrier surface and a second carrier surface; a scrim (e.g., a surface layer comprising a scrim) (715) in contact with the first carrier surface; and a thermoplastic coating covering the scrim and contacting the first carrier surface, wherein the thermoplastic coating adheres the scrim to the carrier substrate (e.g., the surface layer is heated to melt or soften the sheath material to increase adhesion to the core layer or prepreg), wherein the second carrier surface is attached to at least one of the first insulation surface or the second insulation surface (abstract, para 17-19, 42, 65, 79-80; figs 7, 12-13).
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 2-8 and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Xu.
Regarding claim 2, Xu teaches its composite articles comprise a surface layer with a basis weight having a minimum of 10 gsm and a maximum of 300 gsm; and the core layer with a basis weight having a minimum of 300 gsm a maximum of 3500 gsm (i.e., 310 gsm total minimum and 3800 total maximum for the reinforced composite facer) (para 12). This range substantially overlaps that of the instant claim. 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 3-7, Xu teaches the carrier substrate (e.g., prepreg) may comprise glass fibers (i.e., a glass mat formed from a wet-laid process) (para 45, 48, 72-73); and the surface layer may comprise a woven fabric of glass fibers (i.e., scrim) and be coated with a polyolefin (para 12, 58, 77).
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; 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.
Xu teaches its composite articles comprise a surface layer (e.g., scrim) with a basis weight having a minimum of 10 gsm and a maximum of 300 gsm (e.g., 10 to 100 gsm) (para 12, 53). This range substantially overlaps that of the instant claim. 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).
Xu fails to expressly teach wherein the carrier substrate has a basis weight of 25 g/m2 to 150 g/m2; wherein the thermoplastic coating has a basis weight of 10 g/m² to 60 g/m²; and wherein the reinforced composite facer has an average Gurley porosity of 2,000 seconds to 16,000 seconds. However, Xu teaches adjusting the porosity of the core (i.e., the carrier substrate), and therein the basis weight and Gurley porosity, so it would have been obvious to one of ordinary skill in the art at the time to adjust the porosity, therein the basis weight and Gurley porosity, of the core based on the desired end use and properties needed for the end use of the composite.
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.
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).
Regrading claim 10, Xu teaches the prepregs or cores may comprise mineral wool and/or (para 48, 59) and or the decorative layer may comprise a fabric layer bonded to a polyurethane foam core (para 65).
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 claim 11, Xu teaches its composite articles comprise a surface layer with a basis weight having a minimum of 10 gsm and a maximum of 300 gsm; and the core layer with a basis weight having a minimum of 300 gsm a maximum of 3500 gsm (i.e., 310 gsm total minimum and 3800 total maximum for the reinforced composite facer) (para 12). This range substantially overlaps that of the instant claim. 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 12-16, Xu teaches the carrier substrate (e.g., prepreg) may comprise glass fibers (i.e., a glass mat formed from a wet-laid process) (para 65, 72-73); and the surface layer may comprise a woven fabric of glass fibers (i.e., scrim) and be coated with a polyolefin (para 12, 65, 77).
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; 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.
Xu teaches its composite articles comprise a surface layer (e.g., scrim) with a basis weight having a minimum of 10 gsm and a maximum of 300 gsm (e.g., 10 to 100 gsm) (para 12, 53). This range substantially overlaps that of the instant claim. 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).
Xu fails to expressly teach wherein the carrier substrate has a basis weight of 25 g/m2 to 150 g/m2; wherein the thermoplastic coating has a basis weight of 10 g/m² to 60 g/m²; and wherein the reinforced composite facer has an average Gurley porosity of 2,000 seconds to 16,000 seconds. However, Xu teaches adjusting the porosity of the core (i.e., the carrier substrate), and therein the basis weight and Gurley porosity, so it would have been obvious to one of ordinary skill in the art at the time to adjust the porosity, therein the basis weight and Gurley porosity, of the core based on the desired end use and properties needed for the end use of the composite.
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.
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).
Conclusion
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
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