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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-7, 11, 16, 18, 34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. Claim 1 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 claims a negative limitation not found in the specification which is “strips are not studs that extend from the interior side to the exterior side”. This is new matter and must be removed. Claims 2, 3, 5-7, 11, 16, 18, 34 are rejected for depending from claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the cladding fastener withdrawal force” which lacks antecedent basis. The recitation “to double or greater” is not clear as to what is double and what is greater. Claims 2, 3, 5-7, 11, 16, 18, 34 are rejected for depending from claim 1.
The claims will be examined as best understood.
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) 1-3, 5-7, 11, 16, 18 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,308,491 to Porter in view of U.S. Patent Publication No. US 2009/0077916 to Scuderi et al.
Regarding claim 1, Porter discloses a panel (fig. 2, title), an insulation layer (fig. 2: 14) an outer layer (assembly which includes 16) board adjacent to a first lateral surface (flat top) of the insulation layer, and a plurality of reinforcement structures (22a, 22b) which are strips (column 3, lines 57-59 “thin, elongated”) within the panel wherein the reinforcement structure strips are fixed between insulation and inner surface of the outer layer (assembly which includes 16), the reinforcement structures being wood studs (column 3, lines 53-55; abstract), wherein the reinforcement structures have a length equal to the length of the outer layer (see uniform lengths of components fig. 7). However, the outer layer board and the strips are not disclosed as being magnesium oxide. Scuderi discloses a panel with multiple components being made from magnesium oxide [0026]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Porter by using such a material as disclosed by Scuderi in order to better strengthen the structure. Regarding dimensions of these materials, Porter discloses the basic claim structure of the instant application but does not disclose specific dimensions as claimed. Applicant fails to show criticality for specifically claimed dimensions, therefore it would have been an obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Porter to use the dimensions such as specified in these claims as a design choice where larger components would increase strength where needed as smaller components would decrease strength where strength is not needed. Regarding the limitation of the strips increasing the cladding fastener withdrawal force, this may be performed by the strips of Porter.
Regarding claim 2, Porter in view of Scuderi disclose the panel having a second outer layer (12).
Regarding claim 3, a second plurality of reinforcing strips (26b, 26c, 26d) are disclosed and are between the insulation layer (14) and an inner surface of the second outer layer (12), the second plurality of reinforcement structures are also wood studs (column 3, lines 53-55).
Regarding claims 5-7, Porter discloses the basic claim structure of the instant application but does not disclose specific dimensions. Applicant fails to show criticality for specifically claimed dimensions, therefore it would have been an obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Porter to use the dimensions such as specified in these claims as a design choice based upon the intended strength of the panel to be made, as studs/strips are found in various sizes.
Regarding claim 11, markings on the outside indicating reinforcement structure locations is not explicitly disclosed. However, the Examiner takes official notice that studs are typically secured to gypsum by sheetrock screws, the sheetrock screws are visible from outside the panel and locate the studs. This is a well-known and used method of locating a stud when hanging weight from a wall stud. The use of sheetrock screws would have been obvious to one in the art at the time of filing in order to secure the studs to the gypsum in a strong manner.
Regarding claim 16, an epoxy cement is disclosed as being between layer 18 and layer 16 of the outer layer (column 3, lines 28-32), epoxy being inherently water resistant.
Regarding claim 18, a polystyrene and urethane are disclosed as being the insulation (column 3, lines 24-26) as polyurethane foam is a type of foam that is made from polyurethane chemistry, which is a polymer composed of many urethane units.
Regarding claim 34, the reinforcement strips are affixed by insulating material in the insulating layer (Porter, column 3, lines 65-67).
Response to Arguments
Applicant's arguments filed 2/13/26 have been fully considered but they are not persuasive. The Applicant argues that the strips of Porter, as used in the rejection above, are studs and not strips. The Applicant should note that even though they are described as studs by Porter, the term is a functional term and the description of these studs of Porter, as shown in the figures, as thin and may be construed as strips. It is well known that the term “stud” is very broad and does not entail having a specific dimension as some studs are found to be larger or smaller, hollow, steel, C shaped, etc. The studs disclosed by Porter are shown in the figures, such as figures 1 and 2, as being thin strips. Regarding the recently added limitation of increasing fastener withdrawal force, this is a functional limitation reciting a desired result. The structure of Porter in view of Scuderi discloses the same structural limitations of the instant application and can therefore perform in a similar manner. Regarding the claim applying to being prior to installation, the above rejection merely points to the teachings of Porter and Scuderi which meet the structural limitations of the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Basil Katcheves whose telephone number is (571)272-6846. The examiner can normally be reached Monday-Thursday, 8:00 am to 6:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached on (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/BASIL S KATCHEVES/Primary Examiner, Art Unit 3633