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 Claims 1-12 in the reply filed on 23 April 2026 is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claims 4 and 7 are 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.
In claim 4, the Examiner finds the use of “can be” on Lines 4 and 5 to be indefinite.
Claim 7 recites the limitation “the wood-based material”. There is insufficient antecedent basis for this limitation in the claim.
In claim 7, it recites in the alternative “solid wood or engineered wood” but Claim 1 already set forth the slat-shaped lamellas are engineered wood.
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)(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, 3-7 and 9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Patent # 10,697,174 to Bomberg.
Regarding claim 1, Bomberg teaches in Figure 1, a wall element (10) [assembly (Column 4, Line 43)] for thermal insulation (Column 1, Line 7) of an interior wall surface (12) [existing wall (Column 4, Line 44)], comprising an elastic [non-vulcanized rubber adhesive sheet (Column 4, Lines 49-51)] insulating panel (14) [air barrier (Column 4, Line 44)], further comprising: at least two slat-shaped lamellas [spacers], that at least two slat-shaped lamellas [spacers] being spaced apart from one another and arranged parallel to one another on a front side of the elastic insulating panel (14), the slat-shaped lamellas comprising engineered wood [plywood strips (Column 10, Line 35)]. The Examiner finds “so that the elastic insulating panel is mechanically stabilized by the slat-shaped lamellas” to be a recitation of the intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 3, Bomberg teaches the elastic insulating panel is water diffusion inhibiting (Column 4, Lines 21-23).
Regarding claim 4, Bomberg teaches in Figure 1, a continuous water vapor diffusion-inhibiting insulating layer (Column 4, Lines 21-23) can be formed on the interior wall surface [existing wall] by means of the elastic insulating panel (14) and a further elastic insulating panel (18) (Column 8, Lines 53-64) of an adjacent wall element [see Figure 1]. The Examiner finds “the elastic insulating panel has such an elasticity that unevenness on interior wall surface of up to 7 mm can be compensated for” to be a recitation of the intended use of the invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 5, Bomberg teaches the elastic insulating panel has an average thermal conductivity of at most 0.04 watts per meter per Kelvin [0.037 (Column 10, Lines 17-19)].
Regarding claim 6, Bomberg teaches the elastic insulating panel comprises rubber (Column 4, Lines 49-51).
Regarding claim 7, Bomberg teaches the engineered wood [plywood strips (Column 10, Line 35)] comprises plywood (Column 10, Line 35).
Regarding claim 9, Bomberg teaches in Figure 1, a first longitudinal section of an outer slat-shaped lamella [the upper spacer] extends across the front side of the elastic insulating panel (14), and a second longitudinal section of the outer slat-shaped lamella [spacer] does not extend across the front side of the elastic insulating panel (14) because it sticks out the side of it.
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 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 10,697,174 to Bomberg in view of US Patent # 11,560,721 to Dohring.
Regarding claim 2, Bomberg teaches a wall element but only shows it in cross section so its hard to say it extends laterally in a longitudinal direction and laterally in a transverse direction. However, Dohring teaches in Figure 3d, an insulating panel extends laterally in a longitudinal direction and laterally in a transverse direction, wherein the insulating panel extends further in the longitudinal direction than in the transverse direction, wherein slat-shaped lamellas are aligned parallel to the longitudinal direction. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Bomberg with Dohring and have a reasonable expectation of success because Dohring teaches the person skilled in the art will understand that there are almost infinite possibilities of modification (Column 7, Lines 52-55).
Regarding claim 8, Bomberg teaches a wall element with slat-shaped lamellas but does not teach three of them. However, Dohring teaches in Figure 3d, at leas three slat-shaped lamellas are provided, wherein the slat-shaped lamellas are arranged equidistantly on a front side of an elastic insulating panel. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Bomberg with Dohring and have a reasonable expectation of success because Dohring teaches the person skilled in the art will understand that there are almost infinite possibilities of modification (Column 7, Lines 52-55).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 10,697,174 to Bomberg.
Regarding claim 10, Bomberg teaches in Figure 1, the slat-shaped lamellas [spacers] have a cross-sectional area that is normal to a main axis of the lamella but is silent about the exact numerical value of the cross-sectional area. However, it would have been an obvious matter of design choice to specify the exact cross-sectional area for the slat-shaped lamellas since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). In the instant case, it would have been obvious to make the lamellas large enough to allow for proper spacing but not too large to take away the flexibility of the insulating panel.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 10,697,174 to Bomberg in view of US Patent Application Publication # 2008/0120935 to Lembo.
Regarding claim 11, Bomberg teaches in Figure 1, an adhesive surface (Column 4, Lines 49-51) provided on a back side of the insulating panel (14), wherein the back side is a side of the insulating panel (14) facing away from the front side, wherein the adhesive surface is suitable for permanently fixing the wall element (10) to an interior wall surface [existing wall]. Bomberg does not teach the adhesive surface is formed by double-sided adhesive tape. However, Lembo teaches in Figure 4C, an adhesive layer (22) (Paragraph 0028) formed by double-sided tape (Paragraph 0028) wherein the adhesive surface is covered with a protective film [Scotch 939 tape]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Bomber with Lembo and have a reasonable expectation of success because using double-sided tape allows for precise placement of the adhesive where it is desired.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US Patent # 10,697,174 to Bomberg in view of US Patent # 9,109,368 to MacKenzie.
Regarding claim 12, Bonberg teaches a wall element but does not teach a sound absorber. However, MacKenzie teaches in Figure 2, a sound absorber (18) [felt (Column 3, Line 29)] attached to a front side of an insulating panel (16) [sheeting material (Column 3, Line 27)], wherein the sound absorber (18) is arranged between the insulating panel (16) and spacers (20) [clips (Column 3, Line 31)]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Bomberg with MacKenzie and have a reasonable expectation of success because MacKenzie teaches the felt layer creates a weather barrier membrane (Column 2, Lines 11-12).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J TRIGGS whose telephone number is (571)270-3657. The examiner can normally be reached Mon-Thurs 6am-2pm EST.
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/ANDREW J TRIGGS/Primary Examiner, Art Unit 3635
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