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, 2, 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imoto (US 5780519), in view of Paradis et al. (US 2007/0022711 A1) (“Paradis”).
With respect to claim 1, Imoto discloses a composite element for insulating (abstr., col. 1, lines 56-60, col. 7, lines 40-44), the composite element comprising a two-layer structure (col. 4, lines 28-34), wherein one layer comprises a foam layer, which comprises a foam material, the foam material comprising a natural, renewable raw material (col. 2, lines 29-34), in an amount of more than 50 wt. % based on the total composition of the foam material (col. 2, lines 35-54), wherein the renewable raw material is present in the form of fibers comprising lignocellulose (col. 1, lines 14-15, col. 2, lines 35-56).
Imoto is silent with respect to at least one further layer in the form of a functional and/or reinforcing layer, wherein the functional and/or reinforcing layer is configured as a functional film and/or reinforcing panel.
Paradis discloses a composite element (abstr.), comprising a foam insulating layer – element 64, reinforcing layers – elements 62 and 66, and a functional layer - element 82 (0048, Fig. 6). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the element of Imoto an additional reinforcing layer, on the other side of the foam layer of Imoto as disclosed in Imoto in col. 4, lines 28-34, as it is known in the art of insulating panels to provide them with two reinforcing layers. Paradis discloses the functional element 82 provided on one of the reinforcing layers (0049, Fig. 6). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the composite element of Imoto a functional layer as disclosed in Paradis as it is known in the art of composite elements comprising foam insulating layers to provide them with a functional layer.
Regarding claim 2, Imoto and Paradis teach the element of claim 1. Imoto discloses the natural, renewable raw material is a plant-based raw material based on lignified and/or woody plants – lignocellulose (col. 2, lines 29-63).
As to claim 4, Imoto and Paradis teach the element of claim 1. Imoto discloses the foam material comprises a hydrophobic agent – Teflon - and a fungicide – mold inhibitor (col. 4, lines 61-65).
Regarding claim 5, Imoto and Paradis teach the element of claim 1. Imoto discloses the foam material comprises a density of 0.25 to 1.0 g/cm3 (col. 4, lines 35-38). The range of the density overlaps the range recited in claim 5; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 6, Imoto and Paradis teach the element of claim 1. Imoto discloses the foam layer is configured as a thermal insulating layer and/or sound absorbing layer (col. 1, lines 56-59).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imoto, in view of Paradis, and further in view of Bertucelli et al. (US 2017/0022704 A1) (“Bertucelli’).
With respect to claim 7, Imoto and Paradis teach the composite element of claim 1, but are silent with respect to the foam layer comprising a thermal conductivity in a range as recited in the claim. Bertucelli discloses an insulation panel comprising a foam layer (abstr.), wherein the foam layer has a thermal conductivity of 0.0241 W/m*K or 0.0231 W/m*k (0073), which is within the recited range. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the foam layer of Imoto having a thermal conductivity as disclosed in Bertucelli as it is known in the art of insulating panels having foam layers, for the foam layers to have a thermal conductivity as disclosed.
As to claim 11, Imoto and Paradis teach the element of claim 1. Paradis discloses the functional film being a nonwoven layer (0040).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imoto, in view of Paradis, and further in view of Grant et al. (US 10,174,503 B2) (“Grant”).
With respect to claim 8, Imoto and Paradis teach the element of claim 1, but are silent regarding the foam layer comprising, at least on one surface, a three-dimensionally formed or embossed surface structure.
Grant discloses a foam layer comprising on one surface a three-dimensionally formed or embossed surface structure which forms a drainage pattern formed on the surface of the board (abstr., col. 2, lines 58-67, col. 10, lines 16-52, Fig. 3). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form on one of the surfaces of the foam layer of Imoto a three-dimensionally formed structure to help with drainage.
Response to Arguments
Applicant’s arguments filed on Apr. 10, 2026 have been fully considered.
In view of the recent amendment 35 USC 112(b) rejections of claims 3, 11, 12, and 23 have been withdrawn.
The Applicant argued Imoto generally states that lignocellulose may be present in an amount of 50 wt. % or more, but also explicitly states that processing becomes very difficult at a very high lignocellulose contents, indicating a practical upper limit of about 90 wt. % above which moldability and slurry fluidity deteriorate. The Examiner notes Imoto discloses that lignocellulose can coexist with various fibrous raw materials, e.g. natural fibers such as wool, cotton and hemp, and inorganic fibers, and it is in this case where other fibers are present that the content of lignocellulose is desirable to be 90 wt. % or less (col. 2, lines 54-61).
The Applicant argued Imoto relies on substantial amount of polymer additives to obtain a flexible or compressible foam materials, which are different from those required for construction elements, which indicates rigid and durable products that can be used in the construction of buildings. The Examiner notes the claim preamble recites “for insulating and/or construction.” The composite of Imoto is to be used as a heat insulator, sound absorber, and in compound laminated materials in the wide range of various industrial fields (col. 7, lines 40-45, col. 8, lines 1-3). Claim 1 does not specify any characteristics that would correspond to a rigid, heavy, closed cell foam.
The Applicant argued Imoto does not disclose a composite element comprising a foam layer in combination with a further functional and/or reinforcing layer configured as a functional film and/or reinforcing panel. The Examiner notes the combination of Imoto and Paradis teaches such a composite element as discussed above.
The Applicant further argued Imoto and Bertucelli were improperly combined as they are directed to different technical structures. The Examiner notes Bertucelli was cited for the teaching of an insulation panel comprising a foam layer having a thermal conductivity which is within the range recited in claim 7. It was cited for showing that a thermal conductivity of a foam layer within the recited range is known in the art of foam layers.
The Applicant further argued that Grant, cited by the Examiner in rejecting claim 8, is directed to rigid foam sheathing for wall assemblies, the reference being focused on drainage, ventilation and moisture management in wall systems, rather than on the composition of a renewable raw material foam. The Applicant argued the technical focuses of the references are fundamentally different. The Examiner notes Grant was cited for teaching that a foam layer comprising on one surface a three-dimensionally formed or embossed surface structure is known in the art of foam elements.
Regarding Paradis the Applicant argued the skilled person in the art would not consider integrating the elastic, flexible foam of Imoto in the rigid panels of Paradis. The Examiner notes in the rejection the foam layer of Imoto was not integrated into the panels of Paradis. In the rejection it was shown that composite elements including foam insulating layers, reinforcing layers – elements 62 and 66, and a functional layer – element 82 are known in the art of insulating panels, thus it would have been obvious to one of ordinary skill in the art to provide the composite element of Imoto with a functional layer and/or reinforcing layers.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maria Veronica Ewald can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Joanna Pleszczynska/Primary Examiner, Art Unit 1783
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