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
Claim 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected embodiment, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/30/25. The Applicant argues that all of the figures in the specification are drawn to one single embodiment. However, the Applicant should look to the specification which states, [0022] “In one embodiment”, [0023] “In another embodiment”, [0024] “In yet another embodiment”, etc. It appears there are more than one embodiment in the specification.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims claims 1, 4, 5, 6, 10, 11, 1, 1, 15, 4, 1, 5 and 1 of U.S. Patent No. 11,913,227. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19 and 20 of the instant application are substantially similar to claims 1, 4, 5, 6, 10, 11, 1, 1, 15, 4, 1, 5 and 1 of ‘227, respectively.
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) 1-10, 12, and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. US 2016/0069067 to Ciuperca in view of U.S. Patent No. 5,373,674 to Winter.
Regarding claim 1, 4, 5, 15, 16 and 20, Ciuperca discloses an insulated building panel having a foam insulation layer (fig. 1: 12), a rigid sheathing material (48) and a weather resistant barrier (44, 52, [0071]), the insulation layer is a foam of polyurethane [0063] and self-adhered to the sheathing [0071]. However, the panel does not include a drainage plane of corrugations. Winter discloses a building panel (title) having a foam insulation layer (fig. 7: 16) adhered to a corrugated layer (13, and fig. 5: 24a) and an exterior skin (fig. 7: see top layer, not numbered). It should be noted that a corrugated panel may function as having drainage plane since there is an air gap between corrugations and they allow fluid to pass. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ciuperca by substituting such a panel layer for the rigid sheathing to improve rigidity and strength in the wall panel.
Regarding claim 2 and 3, the insulation layer is a foam of polyurethane [0063] and self-adhered to the sheathing [0071].
Regarding claim 6, the vapor barrier is layered [0071].
Regarding claim 7, the weather barrier (44, 52) and the corrugated surface, of Winter, will define a drainage plane as air may flow between corrugations.
Regarding claim 8, magnesium oxide is disclosed [0073].
Regarding claims 9 and 19, a fluid air barrier is disclosed [0071].
Regarding claim 10, am ultraviolet membrane is not disclosed. However, the Examiner takes official notice that the use of ultraviolet resistant materials are well known in the construction art. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ciuperca by having one of the disclosed materials exhibit this property in order to protect from the sun during construction. This would have been an obvious design choice.
Regarding claim 12, a fiber reinforced plastic is disclosed [0070] and the barrier is a single layer when joined in the completed stage.
Regarding claim 14, no stud is used in the panel (the panel as structurally claimed being 12, 48, 44, 52).
Regarding claim 17, magnesium oxide is disclosed [0073].
Regarding claim 18, claim 18 is rejected for reasons cited in the rejections of claims 1 and 6.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication No. US 2016/0069067 to Ciuperca in view of U.S. Patent No. 5,373,674 to Winter further in view of U.S. Application No. US 2009/0223144 to Leahy.
Regarding claim 10, Ciuperca in view of Winter does not disclose a seamless corner with double rail mating alignment component. Leahy discloses such a structure in panels ([0016], [0017]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ciuperca by adding such a structure as disclosed by Leahy in order for a more secure structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Basil Katcheves whose telephone number is (571)272-6846. The examiner can normally be reached Monday-Thursday, 8:00 am to 6:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached on (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/BASIL S KATCHEVES/Primary Examiner, Art Unit 3633