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
Applicant’s election without traverse of claims 1-11 in the reply filed on 8 December 2025 is acknowledged.
Claim Rejections - 35 USC § 102
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 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 1-5, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. US 2013/0101839 (hereinafter “Dion”).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.Regarding claim 3 In addition, Dion teaches the wooden substrate (base layer) comprises oriented strand board (OSB) and plywood (paragraph [0051]).Regarding claim 4 In addition, Dion teaches the overlay (resistance layer) comprises graphite (abstract).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 8 In addition, Dion teaches the overlay (membrane) is formed by impregnating paper with a resin composition and using an adhesive on the bottom layer to attach to the wood substrate, where the adhesive is permitted to dry (fluid-applied membrane) (paragraphs [0048] – [0052]). Alternatively, or in addition, the use of product-by-process limitations has been noted in claim 8, for example, "the resistance layer comprises a fluid-applied membrane". "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process", In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, "although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product", In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP §2113. In the instant case, there is currently no evidence of record to show that any additional structure is implied to the claimed resistance layer when said resistance layer is a membrane applied in a fluid or liquid state.Regarding claim 9 Regarding vapor permeability of the overlay (resistance layer), in general, a limitation is inherent if it is the “natural result flowing from” the explicit disclosure of the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). Therefore, although the prior art does not explicitly disclose the overlay (resistance layer) is water vapor permeable, the claimed property is deemed to be inherent to 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.
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 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Dion, as applied to claim 1.Regarding claim 6 The limitations for claim 1 have been set forth above. 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 7 The limitations for claim 1 have been set forth above. In addition, 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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Dion as applied to claim 1 above, and further in view of United States Patent Application Publication No. US 2009/0197089 (hereinafter “Klippert”).Regarding claim 9 The limitations for claim 1 have been set forth above. In addition, 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 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dion.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. In addition, 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. Regarding vapor permeability of the overlay (resistance layer), although the prior art does not explicitly disclose the overlay (resistance layer) is water vapor permeable, 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.Regarding claim 11 In addition, Dion teaches the fire retardant intumescent coating composition of the overlay (resistance layer) comprises graphite which decreases thermal conductivity and provides flame retardation (abstract and paragraphs [0017] – [0019]), which corresponds to the fire resistant material is graphite.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dion, and further in view of Klippert.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.Regarding claim 11 In addition, Dion teaches the fire retardant intumescent coating composition of the overlay (resistance layer) comprises graphite which decreases thermal conductivity and provides flame retardation (abstract and paragraphs [0017] – [0019]), which corresponds to the fire resistant material is graphite.
Conclusion
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783