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 .
Examiner’s Note
The Examiner notes that on the set of claims and Response to Restriction Requirement submitted on Dec. 19, 2025 the instant application is presented as application number 18/549532, while the instant application’s number is 18/549531. It is suggested that applicant make the appropriate correction.
Election/Restrictions
In the reply filed on Dec. 19, 2025 the Applicant stated that “the applicant does not acquiesce to this [restriction] requirement.” Applicant’s response has been interpreted as election with traverse. Applicant’s election with traverse of claims 1-12 and 23 in this reply is acknowledged. The Applicant did not provide any arguments regarding traversal.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 3, 11, 12, and 23 are 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 3 recites “the natural, renewable raw material has a proportion of the foam material of more than 84 wt.%...” That recitation is grammatically not clear. The Examiner notes the claim was considered for examination purposes as reciting “the foam material comprises natural, renewable raw material in the amount of more than 84 wt.%...”
Claim 11 recites the limitation “functional foil” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation “reinforcing panel” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites “the natural, renewable raw material has a proportion of the foam material of more than 84 wt.%...” That recitation is grammatically not clear. The Examiner notes the claim was considered for examination purposes as reciting “the foam material comprises natural, renewable raw material in the amount of more than 84 wt.%...”
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.
Claim(s) 1, 2, 4, 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Imoto (US 5780519).
With respect to claim 1, Imoto discloses a composite element for insulating (abstr., col. 1, lines 56-60), 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).
Regarding claim 2, Imoto teaches the element of claim 1, wherein 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 teaches the element of claim 1, wherein the foam material comprises a hydrophobic agent – Teflon - and a fungicide – mold inhibitor (col. 4, lines 61-65).
With respect to claim 6, Imoto teaches the element of claim 1, wherein the foam layer is configured as a thermal insulating layer and/or sound absorbing layer (col. 1, lines 56-59).
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) 3, 5, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imoto.
With respect to claim 3, Imoto teaches the element of claim 1, wherein the foam material comprises raw material in the amount of 50 wt.% or more based on the total composition of the foam material (col. 2, lines 29-34, 50-54). The range of the content of the raw material in the foam material overlaps the range recited in claim 3; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 5, Imoto teaches the element of claim 1, wherein 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 23, Imoto teaches the element of claim 1, wherein the foam material comprises raw material in the amount of 50 wt.% or more based on the total composition of the foam material, and the raw material is present in the form of fibers containing lignocellulose (col. 2, lines 29-34, 50-60). The range of the content of the raw material in the foam material overlaps the range recited in claim 23; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imoto, in view of Bertucelli et al. (US 2017/0022704 A1) (“Bertucelli’).
With respect to claim 7, Imoto teaches the composite element of claim 1, but is 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 thermal conductivity as disclosed.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imoto, in view of Grant et al. (US 10,174,503 B2) (“Grant”).
With respect to claim 8, Imoto teaches the element of claim 1, but is 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.
Claim(s) 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Imoto, in view of Paradis et al. (US 2007/0022711A1) (“Paradis”).
With respect to claim 9, Imoto teaches the composite element of claim 1, but is silent regarding at least one further layer in the form of a functional and/or reinforcing layer. 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 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 functional layer.
Regarding claim 10, Imoto and Paradis teach the element of claim 9. Paradis discloses the functional layer is configured as a functional film and the reinforcing layer is configured as a reinforcing sheet (0048, 0049).
As to claim 11, Imoto and Paradis teach the element of claim 10. Paradis discloses the functional film being a nonwoven layer (0040).
With respect to claim 12, Imoto and Paradis teach the element of claim 11. Paradis discloses a plastic panel as the reinforcing sheet (0048).
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Conclusion
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