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 § 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) 1-7, 9-17 and 19-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Paradis (US 2008/0120932) in view of Wolf et al. (US 2017/0051502) Wodzinski et al. (US 2018/0311931).
Regarding claims 1-3 and 9-11, Paradis discloses sheathing board for walls and ceiling system of a building structure, i.e. a sheathing system to externally envelope at least a portion of a building structure, (abstract, 0002, 0007) comprising a reinforcement layer, i.e. a first structural layer having a first surface and a second surface opposite the first surface, (72, fig. 6, 0022), insulation layer having a third surface and a fourth surface opposite the third surface, the third surface of the insulation layer being secured to the second surface of the first structural layer (70, fig. 6, 0022) and a reinforcement layer, i.e. a second structural layer having a fifth surface and a sixth surface opposite the fifth surface, (72, fig. 6, 0022), wherein the thickness of the sheathing board is from 0.15 to 0.75 inches, i.e. a distance from the first surface of the first structural layer to the sixth surface of the second structural layer is no greater than 1.5 inches, and the sheathing board has a R-value of at least 1 (0027).
Paradis fails to disclose polycarbonate in the first and second structural layers.
Wolf disclose roof system comprising air barrier layer containing polycarbonate resin wherein the air barrier layer blocks all air and water vapor and has a thickness of 0.25 mils to 1000 mils (0.0002 to 1 inch) (0284-0286).
It would have been obvious to one of ordinary skill in the art to use the polycarbonate resin of Wolf in the first and/or second structural layers of Paradis to obtain barrier properties by blocking all air and water vapor. Alternatively, Paradis discloses the first and second structural layers comprise polystyrene or polyurethane (0024).
Wolf discloses roof system comprising air barrier layer containing equivalence and interchangeability of using polystyrene and polycarbonate (0286).
Given that Wolf discloses the equivalence and interchangeability of using polycarbonate as presently claimed with using polycarbonate as disclosed by Paradis, it would have been obvious to one of ordinary skill in the art to use polycarbonate in the first and second structural layers to obtain barrier properties by blocking all air and water vapor.
Paradis discloses the insulation layer comprises polystyrene or polyurethane foam, i.e. closed cell thermoplastic material, (0024). Given that the polystyrene or polyurethane foam is used as an insulation material, it is clear that the foam of Paradis would be closed cell foam, absent evidenced to contrary.
Alternatively, Wodzinski discloses multilayer assemblies used in wall panes or flooring panels (abstract) comprising a core layer (0156) wherein the core layer comprises polystyrene closed cell foam, i.e. thermoplastic material, to obtain directional compressive strength, better performance and higher strength (0056).
It would have been obvious to one of ordinary skill in the art to use the closed cell foam material of Wodzinski in the insulation layer of Paradis in view of Wolf to obtain directional compressive strength, better performance and higher strength.
Given that Paradis in view of Wolf and Wodzinski discloses the first and second structural layers containing polycarbonate, it is clear that the first and second structural layers of Paradis in view of Wolf and Wodzinski meet the claim limitation of the first and second structural layers consists of polycarbonate. Further, Given that the panel of Paradis in view of Wolf and Wodzinski discloses the same panel structure as claimed in present claim 1, it is clear that the panel of Paradis in view of Wolf and Wodzinski would have the same racking strength as presently claimed, absent evidence to contrary.
Regarding claims 4 and 5, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 1, wherein the first and second structural layers comprise a polymer and an optional filler material (0024).
Regarding claim 6, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 1, wherein the insulation layer comprises polystyrene or polyurethane foam (0024).
Regarding claim 7, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 1, wherein given that the sheathing system of Paradis discloses the system as claimed in present claim, it is clear that the sheathing system of Paradis would inherently have the same properties as present claimed.
Regarding claim 12, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 1 but is silent regarding system weight. Given that the system compressive strength and flexural strength would depend on the system weight, one of ordinary skill in the art would adjust the system weight including that present claim to obtain end users requirement of compressive strength and flexural strength.
Regarding claim 13, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 1, wherein the thickness of the sheathing board is from 0.15 to 0.75 inches, i.e. a distance from the first surface of the first structural layer to the sixth surface of the second structural layer is no greater than 1.5 inches, and the sheathing board has a R-value of at least 1 (0027).
Regarding claims 14-15 and 19-21, Paradis discloses sheathing board for walls and ceiling system of a building structure, i.e. a sheathing system to externally envelope at least a portion of a building structure and prior to securement to the building structure, (abstract, 0002, 0007) comprising a reinforcement layer, i.e. a first structural layer having a first surface and a second surface opposite the first surface, (72, fig. 6, 0022), insulation layer having a third surface and a fourth surface opposite the third surface, the third surface of the insulation layer being secured to the second surface of the first structural layer (70, fig. 6, 0022), wherein the thickness of the sheathing board is from 0.15 to 0.75 inches, i.e. a distance from the first surface of the first structural layer to the fourth surface of the insulation layer is no greater than 1.5 inches, and the sheathing board has a R-value of at least 1 (0027).
Paradis fails to disclose polycarbonate in the first and second structural layers.
Wolf disclose roof system comprising air barrier layer containing polycarbonate resin wherein the air barrier layer blocks all air and water vapor and has a thickness of 0.25 mils to 1000 mils (0.0002 to 1 inch) (0284-0286).
It would have been obvious to one of ordinary skill in the art to use the polycarbonate resin of Wolf in the first and/or second structural layers of Paradis to obtain barrier properties by blocking all air and water vapor.
Alternatively, Paradis discloses the first and second structural layers comprise polystyrene or polyurethane (0024).
Wolf discloses roof system comprising air barrier layer containing equivalence and interchangeability of using polystyrene and polycarbonate (0286).
Given that Wolf discloses the equivalence and interchangeability of using polycarbonate as presently claimed with using polycarbonate as disclosed by Paradis, it would have been obvious to one of ordinary skill in the art to use polycarbonate in the first and second structural layers to obtain barrier properties by blocking all air and water vapor.
Paradis discloses the insulation layer comprises polystyrene or polyurethane foam, i.e. closed cell thermoplastic material, (0024). Given that the polystyrene or polyurethane foam is used as an insulation material, it is clear that the foam of Paradis would be closed cell foam, absent evidenced to contrary.
Alternatively, Wodzinski discloses multilayer assemblies used in wall panes or flooring panels (abstract) comprising a core layer (0156) wherein the core layer comprises polystyrene closed cell foam, i.e. thermoplastic material, to obtain directional compressive strength, better performance and higher strength (0056).
It would have been obvious to one of ordinary skill in the art to use the closed cell foam material of Wodzinski in the insulation layer of Paradis in view of Wolf to obtain directional compressive strength, better performance and higher strength.
Given that the panel of Paradis in view of Wolf and Wodzinski discloses the same panel structure as claimed in present claim 14, it is clear that the panel of Paradis in view of Wolf and Wodzinski would have the same racking strength as presently claimed, absent evidence to contrary.
Regarding claim 16, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 14, wherein the structural layer comprises a polymer and a filler material (0024).
Regarding claim 17, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 14, wherein the insulation layer comprises polyurethane or polyurethane foam (0024).
Regarding claim 22, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 14 but is silent regarding system weight. Given that the system compressive strength and flexural strength would depend on the system weight, one of ordinary skill in the art would adjust the system weight including that present claim to obtain end users requirement of compressive strength and flexural strength.
Regarding claim 23, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 14, wherein the thickness of the sheathing board is from 0.15 to 0.75 inches, i.e. a distance from the first surface of the first structural layer to the sixth surface of the second structural layer is no greater than 1.5 inches, and the sheathing system has a R-value of at least 1 (0027).
Regarding claim 24, Paradis in view of Wolf and Wodzinski discloses the sheathing system of claim 14, wherein given that Paradis in view of Wolf and Wodzinski discloses the first and second structural layers containing polycarbonate, it is clear that the first and second structural layers of Paradis in view of Wolf meet the claim limitation of the first and second structural layers consists of polycarbonate.
Response to Arguments
Applicant's arguments filed 03/27/2026 have been fully considered but they are not persuasive.
Applicant argues that in general barrier layer is functionally different than a structural layer. However, note that both a barrier and a structural layer are three dimensional figure and if a structural layer discloses the same material as disclosed in a barrier layer, the barrier layer and the structural layer would not functional differently.
Applicant argues that Wolf separately discloses a sheathing panel as a member separate and distinct from the air barrier layer. However, it is noted that once the air barrier layer is applied, the air barrier layer is adjacent to the sheathing panel of Wolf. Note that while Wolf does not disclose all the features of the present claimed invention, Wolf is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely roof system comprising air barrier layer containing polycarbonate resin wherein the air barrier layer blocks all air and water vapor and has a thickness of 0.25 mils to 1000 mils, and in combination with the primary reference, discloses the presently claimed invention.
Regarding the interchangeability rejection, applicant argues that Wolf merely states that various materials, including polystyrene and polycarbonate, may be used to manufacture an air barrier layer. Given that Wolf discloses various materials including polystyrene and polycarbonate is used to manufacture an air barrier layer, it is clear that one of ordinary skill in the art would consider that polystyrene and polycarbonate can be interchangeable to use in manufacturing of an air barrier layer.
Applicant argues that the rejection has not established that the claimed racking performance is inherent in the combination of Paradis and Wolf. However, it is noted that the examiner has acknowledged and addressed racking performance in the rejection as noted above. The Patent and Trademark Office can require Applicant to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on Applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 U.S.P.Q. 431 (CCPA 1977).
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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