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
Newly submitted claim 8 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: As each claim limitation comprises a method step, the claim appears to be a method claim.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 8 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 7 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.
Regarding claim 7, it is unclear how the addition of a 1.5” thick piece of insulation can result in the foamed dimensional wood board of the sizes listed in the preamble. For example, the addition of a 1.5” thick piece of foamed material to a standard 2x4 would result in a modified board sized 1.5” by 5”. The claim language seems to be confusing nominal sizing with actual size. The examiner will examine as best understood, with the addition of a 1.5”x1.5” square producing an actual size of 1.5”x5”, 1.5”x7”, etc. 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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wirth, U.S. Patent Application Publication 2010/0236172 in view of Clark, U.S. Patent 3,445,325.
Regarding claim 7, Wirth discloses an insulated framing element comprising: an uniform 1 1/2 x 1 1/2 inch square (paragraph 30) foamed urethane insulation (paragraph 23) bonded to the surface area of the outboard edge creating the foamed insulation dimensional wood board, but does not disclose the outboard edge being incised approximately to 1/8 inch deep to increase the surface area thereof without damaging wood fibers. 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 of the claimed invention to incise the wood members to increase surface area for better cohesion between components, as a urethane adhesive or injected urethane may be used for the insulation member (paragraph 23), and because incising or scoring to increase a surface area is well known in the art. It would also be obvious to incise the wood members at a depth of 1/8” so as to maintain the structural integrity of the member, 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
Response to Arguments
Applicant's arguments filed 05/22/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s argument toward Clark requiring a deep incising, the examiner respectfully disagrees. Clark does not make any mention of a required depth, in fact Clark does not require this process in his invention. Incising is taught in the invention as being a known process in the art, and in that same manner it has been applied to the rejection of the Office Action. The incising depths as asserted by the applicant are not incising depths, but typical penetration depths of wood treatments prior to a surface being incised. Clark has not disclosed any depth of incising.
Regarding the applicant’s argument that Lockhart does not disclose heating of wood boards, the examiner agrees. As stated in the Office Action of 12/05/2025, this is a product-by-process limitation. “[E]ven 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. The claim limitation, now moot as claim 4 has been cancelled, was examiner for the final product of the two bonded components. The process by which the components are bonded is not examined as this is an apparatus claim.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the references used to disclose or teach the claim limitations are all improvements in structural lumber.
The applicant’s argument that Clark is incising wood for creosote penetration is unclear. The incising is taught as background in the art with no specific treatment/chemical mentioned, but only as a means to increase surface area of a wood member as is known in the art, and subsequently, creosote is disclosed as a preferred preservative treatment for Clark’s own invention. There is no place in Clark discussing a deep penetration for creosote application as asserted by the applicant. However, this argument is moot as a new ground of rejection has been used for the newly added claim 7 requiring a 1.5” by 1.5” insulation member.
See rejections as set forth above.
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 GISELE D FORD whose telephone number is (571)270-7326. The examiner can normally be reached M-T,Th-F 7:30am-4:30pm.
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GISELE D. FORD
Examiner
Art Unit 3633
/GISELE D FORD/Examiner, Art Unit 3633
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