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
Claims 5-6 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11/18/2025.
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 1-4 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 limitation "the outbound edge" in line 4. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 1, line 3, the limitation “the insulated stud” lacks antecedent basis.
Claim 1 recites the limitation "the outboard" in line 5. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 3 recites the limitation "the wood boards" in line 1. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 3 recites the limitation "their crowns" in line 2. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 3 recites the limitation "the urethane foam" in line 2. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 4 recites the limitation "the wood boards" in line 1. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claims 2-4 appear to be reciting method steps. It is unclear if the invention comprises an apparatus or a process. A claim that recites both a system (or apparatus) and a method of using that system (or apparatus) does not apprise one of ordinary skill in the art of its scope, and thus, is indefinite under 35 U.S.C. § 112, second paragraph. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005) (holding that a claim that recites both a system and the method for using that system does not apprise a person of ordinary skill in the art of its scope); see also MPEP § 2173.05(p)(ID (“A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite... .”). Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lockhart, U.S. Patent Application Publication 2011/0239573 in view of Charlson, U.S. Patent 6,125,608 and Clark, U.S. Patent 3,445,325.
Regarding claim 1, Lockhart discloses an insulated framing element comprising: and b.) a uniform 1 ½ -2 ½ condensed foam insulation (1.5 inches to conform to the thickness of the dimensional lumber, paragraph 41) is bonded to the outboard incised thereby creating insulated dimensional lumber of 2x6 inches, 2x8 inches, 2x10 inches 2x12 inches or 2x14 inches (the dimension of conventional lumber, paragraph 7), but does not disclose the outbound edge being incised to increase surface area thereof, nor the foam component liquid urethane foam. Charlson teaches use of polyurethane in an insulated framing member (paragraph 7). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize polyurethane for its strength and insulative properties. Clark teaches incising of wood members (col. 1, lines 40-49). It would have been obvious to one having ordinary skill in the art before the effective filing date to incise the wood members to increase surface area for better cohesion between components, as it is well known in the art.
Regarding claim 2, Lockhart discloses an insulating framing component but does not specifically disclose wherein the outboard are incised up to 1/8 inches into the outboard edges as to not damage any wood fibers. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to roughen the surface at such a depth to provide adequate surface area to adhere securely to the insulation component, and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233
Regarding claim 4, Lockhart discloses an insulating framing member wherein the wood boards have their crowns mitigated by pressure force to assure the urethane foam insulation is uniform in 1 ½-2 ½ inch thickness (1.5 inch thickness as established in Claim 1). The phrase “have their crowns mitigated by pressure force to assure the urethane foam insulation is uniform in 1 ½-2 ½ inch thickness” is a product by process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Regarding claim 4, Lockhart discloses an insulating framing member wherein the wood boards are heated to approximately 100° F to assure bonding of the urethane foam insulation and minimize the amount of liquid urethane foam used (the components are bonded, see paragraph 45). The phrase “heated to approximately 100° F to assure bonding of the urethane foam insulation and minimize the amount of liquid urethane foam used” is a product by process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Conclusion
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GISELE D. FORD
Examiner
Art Unit 3633
/GISELE D FORD/Examiner, Art Unit 3633