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 .
Information Disclosure Statement
The information disclosure statement filed 5/26/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Withdrawn Objections/Rejections
The objection to the drawings of record in the previous Office Action mailed 2/26/2026 has been withdrawn due to Applicant's amendment filed on 5/26/2026.
The 35 U.S.C. 112(a) rejection of claims 48-65 of record in the previous Office Action mailed 2/26/2026 has been withdrawn due to Applicant's amendment filed on 5/26/2026.
The 35 U.S.C. 112(b) rejection of claims 48-65 of record in the previous Office Action mailed 2/26/2026 has been withdrawn due to Applicant's amendment filed on 5/26/2026.
The 35 U.S.C. 112(d) rejection of claims 54, 55, 58, 64 and 65 of record in the previous Office Action mailed 2/26/2026 has been withdrawn due to Applicant's amendment filed on 5/26/2026.
The 35 U.S.C. 102(a)(1) rejection of claims 48, 49, 50, 53-55, 57-60, 63 and 65 as being anticipated by Greenfield (US 2017/0305101) of record in the previous Office Action mailed 2/26/2026 has been withdrawn due to the Applicant’s amendment filed on 5/26/2026.
The 35 U.S.C. 103 rejection of claims 51, 52, 61 and 62 as being unpatentable over Greenfield (US 2017/0305101) in view of Trani et al. (US 9,034,443) of record in the previous Office Action mailed 2/26/2026 has been withdrawn due to the Applicant’s amendment filed on 5/26/2026.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 46, 66 and 68-70 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gerard (US 3,668,055).
Regarding claim 46, Gerard discloses a product (Figs. 2-3; col. 1, lines 51-58) comprising a first paper substrate forming a plurality of layers (layers N) comprising a first layer (first layer N) comprising a first embossed pattern (K) comprising a plurality of embossed lines defining a plurality of non-embossed portions of the first layer (Figs. 2-3), a second layer (second layer N) comprising a second embossed pattern (L) comprising a plurality of protrusions formed in the second layer (Figs. 2-3), wherein the first layer is disposed to overlap the second layer such that the first layer does not nest with itself or the second layer (Fig. 3; claim 1), a second paper substrate (top sheet T) disposed on a first side of the first paper substrate, and a third paper substrate (bottom sheet T) disposed on a second side of the first paper substrate opposite the first side, wherein the first paper substrate is attached to the second paper substrate at one or more points (Fig. 3; col. 4, lines 9-11).
The limitation “insulation” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “insulation” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Regarding claim 66, Gerard discloses a product (Figs. 2-3; col. 1, lines 51-58) comprising a first paper substrate forming a plurality of layers (layers N) comprising a first layer (first layer N) comprising a first embossed pattern (K) comprising a plurality of embossed lines defining a plurality of non-embossed portions of the first layer (Figs. 2-3), a second layer (second layer N) comprising a second embossed pattern (L) comprising a plurality of protrusions formed in the second layer (Figs. 2-3), wherein the first layer is disposed to overlap the second layer such that the first layer does not nest with itself or the second layer (Fig. 3; claim 1), a second paper substrate (top sheet T) disposed on a first side of the first paper substrate, and a third paper substrate (bottom sheet T) disposed on a second side of the first paper substrate opposite the first side, wherein the first paper substrate is attached to the second paper substrate at one or more points (Fig. 3; col. 4, lines 9-11), and wherein the first paper substrate comprises a single continuous sheet (Figs. 1 and 3, sheet S).
The limitation “insulation” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “insulation” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Regarding claim 68, Gerard teaches the first embossed pattern being different from the second embossed pattern (col. 4, lines 30-36).
Regarding claim 69, Gerard discloses the second paper substrate (top sheet T) at least partially covers the first paper substrate (Fig. 3).
Regarding claim 70, Gerard discloses the third paper substrate (bottom sheet T) at least partially covers the first paper substrate (Fig. 3).
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 67 is rejected under 35 U.S.C. 103 as being unpatentable over Gerard as applied to claim 66 above.
Gerard teaches the claimed insulation product as shown above, but fails to teach the second embossed pattern comprising a bubble pattern. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the second embossed pattern in Gerard to comprise a bubble pattern, since such a modification would have involved a mere change in the shape of the pattern. A change in shape is generally recognized as being within the level of ordinary skill in the art, absent unexpected results. MPEP 2144.04.
Response to Arguments
Applicant's arguments, filed 5/26/2026, with respect to the 35 U.S.C. 102(a)(1) rejection of claim 46 as being anticipated by Gerard (U.S. Patent No. 3,668,055) have been fully considered, but they are not persuasive.
Applicant argues that “Gerard fails to disclose at least ‘a first paper substrate comprising a first layer comprising a first embossed pattern comprising a plurality of embossed lines defining a plurality of non-embossed portions of the first layer,’ as recited in independent Claim 46 (emphasis added). Instead, Gerard discloses that in its embossed sheets ‘there is no substantial break in the embossment at the meeting portions of the squares or rectangles but the embossed portions will closely fit into each other at such meeting portions.’ See Gerard, col. 1, 11. 27-30; see also id. at FIGS. 2-3. This is very different from the claimed ‘first layer comprising a plurality of non-embossed portions.’ See, e.g., Specification, FIGS. 3AB, 3AC”.
This argument is not deemed persuasive. Gerard teaches each layer (N) of the first paper substrate (S) is embossed to form a three-dimensional pattern. Each layer includes mounds and recesses. The mounds are raised portions above the layer and therefore are deemed embossed portions, and the recesses are not raised above the layer and therefore are deemed non-embossed portions. Thus, Gerard teaches a first layer (N) comprising a plurality of non-embossed portions (recesses). Accordingly, Gerard teaches every feature of claim 46, and therefore anticipates claim 46.
Allowable Subject Matter
Claims 48-55 are allowed. The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Greenfield (U.S. Pub. No. 2017/0305101) fails to teach or reasonably suggest the distinct feature of “wherein the insulation product has an R-Value per inch of greater than 3.77”, as now recited independent claim 48.
Claim 47 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Gerard fails to teach or reasonably suggest the distinct feature of “wherein the insulation product has an R-Value per inch of greater than 3.77”.
Conclusion
Applicant's amendment necessitated the new grounds 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 CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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