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 § 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 1-8 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 1 recites the limitations “the integrated panel” and “an integral panel.” The scope of the claim is unclear because it appears these two recitations are referring to the same element, but two different terms are being used. To further prosecution, the examiner is interpreting the intent of the applicant was to refer to these two different recitations as “the integral panel” and “an integral panel” respectfully and will be examined on the merits as such.
Claim 1 recites the limitation "the integrated panel" in line 7. There is insufficient antecedent basis for this limitation in the claim. Upon further review of the claim, the last line of the claim recites “the base layer and the resistance layer are pre-formed into an integral panel.” Therefore, the examiner suspects the intent of the applicant was to recite the last three lines of the claim as “…wherein the base layer and the resistance layer are pre-formed into an integral panel, wherein the integral panel has a listed flame spread index of 25 or less (according to the ASTM E84 testing standard)” and will be examined on the merits as such.
Claims 2-8 are included in this rejection based on their ultimate dependency from claim 1.
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.
Claims 1-3, 5, 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. US 2013/0101839 (hereinafter “Dion”), and further in view of United States Patent Application Publication No. US 2009/0197089 (hereinafter “Klippert”).Regarding claims 1 and 2 Dion teaches a panel (structural panel) comprising a wood substrate (base layer with a first surface and a second surface comprising wood or engineered wood material) with an overlay (resistance layer), comprising a core layer substrate and a fire retardant intumescent coating, applied thereon (covering the first surface) (abstract; and paragraphs [0010], [0042] and [0065]), which also corresponds to the base layer and the resistance layer being pre-formed into an integral panel. Dion teaches the fire retardant intumescent coating composition provides superior water resistance (paragraph [0017]), which corresponds to the resistance layer being both fire resistant and bulk water resistant. In addition, Dion teaches the fire retardant intumescent coating gives a high degree of fire resistance to the overlay (paragraph [0001]). Dion teaches a flame retardancy test performed on samples which uses a small scale tunnel test, where a cement board was used to calibrate the zero flame spread and a red oak board was used in the calibration and its flame spread was given a value of 100 (paragraphs [0060] and [0068]). Dion teaches a flame spread rating of 2, 11 and 17, when exposed for a time of 4, 10, and 30 min, respectfully (Example 3, Table 3). Regarding the flame retardancy of the wood substrate and overlay (integral panel), although the prior art does not explicitly disclose the combination of the wood substrate and overlay (integral panel) has a listed flame spread index of 25 or less (according to the ASTM E84 testing standard), the claimed property is deemed to naturally flow from the structure in the prior art since the Dion reference teaches an invention with an identical and/or substantially identical structure and/or chemical composition as the claimed invention. See MPEP §2112. Dion does not explicitly teach the overlay (resistance layer) is water vapor permeable and has a water vapor permeance of at least 5 perms (according to the ATSM E96 testing standard). Klippert teaches a compact laminated assembly, comprising a coating composition, applied onto wooden substrates (abstract; and paragraphs [0034] and [0055]). Klippert teaches in order to prevent accumulation of water vapor in the wood or wood based material beneath the coating, it is important to ensure the coating remains permeable to water vapor (paragraph [0110]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the overlay of Dion with the water vapor permeability of Klippert to prevent accumulation of water vapor in the underlying wood substrate. The combination of Dion and Klippert does not explicitly teach the overlay (resistance layer) has a water vapor permeance of at least 5 perms (according to the ATSM E96 testing standard). It would have been obvious to one having ordinary skill in the art at the time of the invention to determine a suitable water vapor permeance using nothing more than routine experimentation to prevent the accumulation of water vapor in the wood or wood based material beneath the coating, as desired by Klippert. It has been held 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 unless such a range is shown to be critical. Please see MPEP § 2144.05(II)(A). Regarding claim 3 In addition, Dion teaches the wooden substrate (base layer) comprises oriented strand board (OSB) and plywood (paragraph [0051]).Regarding claim 5 In addition, Dion teaches the core layer of the overlay (resistance layer) comprises a resin-impregnated paper overlay (paragraphs [0042] – [0043]).Regarding claim 6 In addition, Dion teaches the fire retardant intumescent coating protects the underlying substrate from flame breakthrough (paragraphs [0018] and [0046]). Dion does not explicitly teach a second overlay (resistance layer coating) coating the other surface (second surface) of the wood substrate. It would have been an obvious matter of design choice to provide a second overlay (resistance layer coating) on the other surface (second surface) of the wood substrate to provide the flame retardant properties to both sides of the wood substrate. See also MPEP §2144.04(VI)(B).Regarding claim 10 Dion teaches a panel (structural panel) comprising a wood substrate (base layer with a first surface and a second surface) with an overlay (resistance layer), comprising a core layer substrate and a fire retardant intumescent coating, applied thereon (covering the first surface) (abstract; and paragraphs [0010], [0042] and [0065]), which also corresponds to the base layer and the resistance layer being pre-formed into an integral panel. Dion teaches the wooden substrate (base layer) includes an oriented strand board (OSB) (engineered wood) (paragraph [0051]). Dion teaches the fire retardant intumescent coating composition provides superior water resistance (paragraph [0017]), which corresponds to the resistance layer: being both fire resistant and bulk water resistant; and comprising fire resistant material. Dion teaches the top coating of the overlay may be 50-300 gsm, and when the top coating is at lower coat weights, the overlay tends to crack when exposed to a flame for an extended period of time. The cracks provide an opening for the flame, reducing the fire resistance of the product (paragraph [0046]). The examiner notes a person having ordinary skill in the art would readily recognize a larger amount (larger areal weight or gsm) of the top coating would result in a thicker application of said top layer when compared to a top coating having a relatively smaller amount applied thereon. Dion does not explicitly teach the overlay (resistance layer) has a thickness in the range of from approximately 20 mils to approximately 80 mils. It would have been obvious to a person having ordinary skill in the art at the time of the invention to determine an appropriate thickness of the overlay (including its top coating) using nothing more than routine skill to provide sufficient material to the wood substrate to prevent the tendency for crack formation, thereby preventing the reduction of fire resistance to the product. Dion does not explicitly teach the overlay (resistance layer) is water vapor permeable. Klippert teaches a compact laminated assembly, comprising a coating composition, applied onto wooden substrates (abstract; and paragraphs [0034] and [0055]). Klippert teaches in order to prevent accumulation of water vapor in the wood or wood based material beneath the coating, it is important to ensure the coating remains permeable to water vapor (paragraph [0110]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the overlay of Dion with the water vapor permeability of Klippert to prevent accumulation of water vapor in the underlying wood substrate.
Claims 4, 7, 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dion and Klippert as applied to either claim 1 or 10 above, and further in view of United States Patent Application Publication No. US 2017/0210098 (hereinafter “Moore”).Regarding claims 4 and 11 The limitations for claims 1 and 10 have been set forth above. In addition, Dion does not explicitly teach the overlay (resistance layer comprising a core layer substrate and a fire retardant intumescent coating) comprises non-combustible magnesium oxide, non-combustible fiberglass-reinforced magnesium oxide, or combination thereof. Moore teaches a multi-layer panel comprising: a base layer or first layer, such as OSB or plywood; the base layer being coated or treated with a product that provides fire resistance, where the fire resistance treatment may be one or more FR coating; and a third layer which is a weather or water resistant barrier (WRB) which may be applied as a coating (abstract). Moore teaches the fire resistance treatment may comprise one or more of the following: pyrotite coating; non-combustible magnesium oxide coating; non-combustible fiberglass reinforced magnesium oxide coating; intumescent coating; etc.; or combinations thereof. This FR treatment allows the panel to be used in approved one and two hour fire-rated assemblies (paragraph [0011]). It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the fire retardant intumescent coating of Dion with the non-combustible magnesium oxide and/or non-combustible fiberglass reinforced magnesium oxide of Moore to yield a panel which is approved to be used in one and two hour fire-rated assemblies.Regarding claims 7 and 8 The limitations for claim 1 have been set forth above. In addition, Dion teaches the panel includes coating layers which impart water resistance to the panel (paragraphs [0001] and [0017]). Dion does explicitly teach the resistance layer comprises a fluid applied membrane which is elastomeric, and has a thickness in the range of from approximately 20 mils to approximately 80 mils. Moore teaches a multi-layer panel comprising: a base layer or first layer, such as OSB or plywood; the base layer being coated or treated with a product that provides fire resistance, where the fire resistance treatment may be one or more FR coatings; and a third layer which is a weather or water resistant barrier (WRB) which may be applied as a coating (abstract). Moore teaches the water resistant barrier (WRB) (resistance layer) comprises a fluid or liquid applied membrane, is elastomeric, and is substantially bulk water resistant and water vapor permeable (paragraphs [0028] – [0032]). Moore also teaches the WRB has a water vapor transmission rate (permeance) of from 0.5 to about 10 gms/m2/24 hrs based on the ASTM E96 testing standard (paragraphs [0032] and [0033]). Moore teaches the ratings of the applied WRB depend upon the type of WRB fluid or liquid, and the coating thickness (paragraph [0032]). Moore does not explicitly teach the WRB (resistance layer) has a thickness in the range of from approximately 20 mils to approximately 80 mils. It would have been obvious to a person having ordinary skill in the art at the time of the invention to determine an appropriate thickness of the WRB (resistance layer) using nothing more than routine experimentation to yield a water resistive barrier (WRB) which exhibits desired ratings. Dion, Klippert, and Moore are analogous inventions in the field of fire and water resistant panels. It would have been obvious to one skilled in the art at the time of the invention to modify the panel of Dion with the WRB of Moore to yield a panel which has a weather or water resistant barrier that exhibits a combination of: bulk water resistance; water vapor permeability; and/or fire resistant ratings.
Response to Arguments
It is initially noted that the applicant provided an overview of the amendments to claim 1 on page 6. However, the applicant has highlighted amendments which are not present in the claims.
Applicant’s arguments, see pages 6-8, filed 4 June 2026, with respect to the rejections of: claims 1-5, 8 and 9 under 35 USC §102(a)(1) as being anticipated by Dion; claims 6 and 7 under 35 USC §103 as being obvious over Dion have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of the updated rejection of record.
Applicant's arguments filed 4 June 2026 have been fully considered but they are not persuasive.
The applicant argued, regarding claim 10, Dion teaches away from a thickness in the range of approximately 20 mils to approximately 80 mils, which was previously addressed. Earlier in the applicant’s remarks (see pages 10-11), an argument was presented which concluded Dion teaches against a thickness in the claimed range because construction-grade OSB typically ranges from 7/16 in up to ¾ inch, where the instant claims require only up to 0.08 inches (80 mils) of the resistance or coating layer, so Dion teaches against heavier and thicker coatings. The examiner respectfully submits this argument is not persuasive. It appears the applicant is arguing two completely separate elements as one element. That is, the applicant initially highlights an OSB, which typically has a thickness of 0.4375 – 0.75 inches, and the point of the thin coating layer limitation is to avoid adding too much weight to the panel. This does not appear to be a developed argument because it is unclear how Dion teaches away from the claimed thickness of the resistance layer by comparing the sizes of typical OSBs.
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 BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
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