DETAILED ACTION
This Office action is a reply to the amendment filed on 6/2/2026. Currently, claims 1-3, 5-8 and 21-33 are pending. Claims 4 and 9-20 have been cancelled. No claims have been withdrawn. New claims 21-33 have been added.
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, 3, 6, 8, 22, 24, 30-31 and 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Record (US 20020189182).
Claim 1, Record provides a pour in place roofing insulation system (interchangeable building system for roofs [0035]), comprising:
an upper roof surface material (108 alone or alternatively 108 and 104; Figs. 1-3) that is configured to be vertically spaced apart from a top surface of a roofing structure (under the broadest reasonable interpretation, 108 or 108/104 is suitable to be vertically spaced apart from a top surface 110 or 110/106 of a roofing structure, as exceedingly broadly claimed; Figs. 1-3);
a plurality of expansion limiters (122, 124; Fig. 3) that are configured to extend between the roofing structure and the upper roof surface material (Fig. 3); and
a polyiso foam insulation material [0028] that is configured to be disposed between and filling at least substantially an entirety of a vertical space between the roofing structure and the upper roof surface material ([0028]; Figs. 1-3), wherein a tackiness of the polyiso foam insulation material bonds the polviso foam insulation material to the upper roof surface material (the polyiso foam insulation material is understood to be self-bonding such that a tackiness would be expected to be present in the material itself that permits it to bond to 108, 110; [0028]; Figs. 1-3).
Claim 3, Record further provides each of the plurality of expansion limiters comprising a vertical standoff (under the broadest reasonable interpretation, elements 118, 124 each constitute a vertical standoff, as exceedingly broadly claimed).
Claim 6, Record further provides wherein: the upper roof surface comprises a roofing coverboard 104.
Claim 8, Record further provides the roofing structure (under the broadest reasonable interpretation of roofing structure, element 110 or 110/106 forms a portion of a structure used for roofing and thus constitutes a roofing structure, as exceedingly broadly claimed; Figs. 1-3), wherein the upper roof surface material is vertically spaced apart from a top surface of the roofing structure (Figs. 1-3); the plurality of expansion limiters extend between the roofing structure and the upper roof surface material (Figs. 1-3); and the polyiso foam insulation material is disposed between and fills at least substantially the entirety of the vertical space between the roofing structure and the upper roof surface material (Figs. 1-3).
Claim 22, Record further provides wherein one end of each of the plurality of expansion limiters is coupled with the roofing structure (under the broadest reasonable interpretation of roofing structure as above, as exceedingly broadly claimed; note that if applicant intends for the roofing structure to comprise additional structural elements or features, such elements or features should be added into the claims; Figs. 1-3); and an opposite end of each of the plurality of expansion limiters is coupled with the upper roof surface material (Figs. 1-3).
Claim 24, Record further provides wherein the upper roof surface material comprises a rigid member (under the broadest reasonable interpretation, 108 alone or alternatively 108 and 104 constitutes a rigid member, as exceedingly broadly claimed; Figs. 1-3).
Claim 30, Record further provides wherein the polyiso foam insulation material has an R-value per inch of between 3.0 and 8.0 [0030].
Claim 31, Record further provides wherein a lowermost surface of the upper roof surface material is secured to the roofing structure via the polyiso foam insulation material without use of adhesives or fasteners (it is understood that it is the polyiso foam insulation that secures the lowermost surface of the upper roof surface material to the roofing structure without use of adhesives or fasteners; [0028]; Figs. 1-3).
Claim 33, Record further provides wherein the upper roof surface material comprises a construction board (under the broadest reasonable interpretation, element 108 or 104 constitutes a construction board, as exceedingly broadly claimed; Figs 1-3).
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182) in view of South et al. (US 4155967) (‘South’).
Claim 2, Record teaches all the limitations of claim 1 as above. Record does not teach wherein each of the plurality of expansion limiters comprises one or both of a string and a wire. However, South teaches a foamed insulation system comprising expandable foam applied to a surface and a plurality of expansion limiters 60 comprising a wire (col. 5, lines 10-40; Figs. 2-3). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to incorporate a plurality of expansion limiters comprising one or both of a string and a wire, with the reasonable expectation of success of using a known material for the expansion limiters to provide a means to determine an amount of foam insulation material applied, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182) in view of Krumweide (US 4239564).
Claim 2, Record teaches all the limitations of claim 1 as above. Record does not teach wherein each of the plurality of expansion limiters comprises one or both of a string and a wire. However, Krumweide teaches a foamed insulation system comprising expandable foam applied to a surface and a plurality of expansion limiters (10, 18) comprising a wire (col. 3, lines 30-55; Figs. 1-3). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to incorporate a plurality of expansion limiters comprising one or both of a string and a wire, with the reasonable expectation of success of using a known material for the expansion limiters to provide a means to determine an amount of foam insulation material applied, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182) in view of in view of Thoeny (US 4550544).
Claim 2, Record teaches all the limitations of claim 1 as above. Record does not teach wherein each of the plurality of expansion limiters comprises one or both of a string and a wire. However, Thoeny teaches a foamed insulation system comprising expandable foam applied to a surface and a plurality of expansion limiters 60 comprising a wire (“wire gauge not shown” col. 5, lines 30-37). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to incorporate a plurality of expansion limiters comprising one or both of a string and a wire, with the reasonable expectation of success of using a known material for the expansion limiters to provide a means to determine an amount of foam insulation material applied, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182) in view of Castles et al. (US 20230053240) (‘Castles’).
Claim 2, Record all the limitations of claim 1 as above. Record does not teach wherein each of the plurality of expansion limiters comprises one or both of a string and a wire. However, Castles teaches a foamed insulation system comprising an insulation material applied to a surface and a plurality of expansion limiters comprising a string or a wire [0056]. It would have been obvious to one of ordinary skill in the art, before the effective filing date, to incorporate a plurality of expansion limiters comprising one or both of a string and a wire, with the reasonable expectation of success of using a known material for the expansion limiters to provide a means to determine an amount of foam insulation material applied, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182) in view of Archer (US 20200173480).
Claim 2, Record teaches all the limitations of claim 1 as above. Record does not teach wherein each of the plurality of expansion limiters comprises one or both of a string and a wire. However, Archer teaches an insulation system comprising an adjustable fastener, wherein the adjustable fastener may comprise a wire material ([0028]). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to incorporate a plurality of expansion limiters comprising one or both of a string and a wire, with the reasonable expectation of success of using a known material for the expansion limiters to provide a means to determine an amount of foam insulation material applied, and since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182).
Claim 5, Record teaches all the limitations of claim 1 as above. Record does not teach wherein at least some of the plurality of expansion limiters comprise different lengths such that a vertical distance between the roofing structure and the upper roof surface material varies across an area of the roofing structure. However, Batch teaches a roof insulation system, wherein panels have varying heights such that a vertical distance between a roofing structure and an upper roof surface material varies across an area of a roofing structure (Fig. 5). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the system such that at least some of the plurality of expansion limiters comprise different lengths such that a vertical distance between the roofing structure and the upper roof surface material varies across an area of the roofing structure, with the reasonable expectation of success of using known means to establish a sloped roof that prevents water from collecting (col. 1, lines 60-67), since it has been held that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182) in view of Glos (US 20200239621).
Claim 7, Record teaches all the limitations of claim 1 as above. Record does not teach wherein the polyiso foam insulation material comprises an open cell foam. However, Glos teaches a roofing insulation system, comprising a polyiso foam insulation material ([0085]-[0086]) that can be used on roofs in building construction ([0085]-[0086]), comprising an open-cell polyiso foam [0085]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the material of the foam insulation to comprise an open-cell polyiso foam insulation material, with the reasonable expectation of success of using a known foam insulation material to provide superior fire resistance and energy efficiency, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim(s) 26, 29 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182).
Claim 26, Record teaches all the limitations of claim 1 as above. Record does not teach in the embodiment of Figs. 1-3 wherein the polyiso foam insulation material comprises a single and continuous layer of foam that is generally uniform across a thickness of the polyiso foam insulation material. However, in the embodiment of Fig. 7, Record teaches wherein the polyiso foam insulation material comprises a single and continuous layer of foam that is generally uniform across a thickness of the polyiso foam insulation material (Fig. 7). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the polyiso foam insulation material as a single and continuous layer of foam that is generally uniform across a thickness of the polyiso foam insulation material, with the reasonable expectation of success of having increased strength without a substantial weight increase (Record [0054]), since the embodiments of Figs. 1-3 and 7 were treated as obvious variants of each other, and since it has been held that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claims 29, Record teaches all the limitations of claim 1 as above. Record does not teach wherein the upper roof surface material has a thickness of between 0.25 inches and 2 inches. However, Record teaches the overall panel being generally between four and six inches thick. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the thickness of the upper roof surface material to be between 0.25 inches and 2 inches, with the reasonable expectation of success of forming the overall panel to be between the intended four and six inches of thickness, while meeting various desired performance characteristics, such as strength, weight and durability using known materials, since it has been held that 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. In re Aller, 105 USPQ 233.
Claims 32, Record teaches all the limitations of claim 1 as above. Record does not teach in the embodiment of Figs. 1-3 wherein the upper roof surface material defines at least one opening configured to enable the polyiso foam insulation material to be introduced through the upper roof surface material into the vertical space between the roofing structure and the upper roof surface material. However, in the embodiments of Figs. 8-11, Record teaches the upper roof surface material defining at least one opening (labeled 54 in Fig. 8, and 954 in Figs. 10-11 ) configured to enable the polyiso foam insulation material to be introduced through the upper roof surface material into the vertical space between the roofing structure and the upper roof surface material (Figs. 8-11). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the embodiment of Fig. 1 to include in the upper roof surface material at least one opening configured to enable the polyiso foam insulation material to be introduced through the upper roof surface material into the vertical space between the roofing structure and the upper roof surface material, with the reasonable expectation of making it easier for the polyiso foam insulation material to be introduced and penetrate into various areas of the panel for bonding, since the embodiments of Figs. 1-3 and 8-11 were treated as obvious variants of one another.
Claim(s) 27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Record (US 20020189182) in view of Altenberg (US 6096416).
Claims 27-28, Record teaches all the limitations of claim 1 as above. Record does not teach wherein the upper roof surface material comprises a roofing membrane. However, Altenberg teaches a roofing insulation system comprising foam insulation in panels, wherein an upper roof surface material comprises a roofing membrane (18; Fig. 1) comprising PVC (col. 9, lines 38-60). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the pour in place roofing insulation system by forming the upper roof surface material as including a roofing membrane comprising PVC, with the reasonable expectation of success of providing an impenetrable water and moisture layer into the system using known means to prevent water from penetrating through the roof.
Allowable Subject Matter
Claim 21, 23 and 25 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, specifically Record (US 20020189182) does not teach or disclose, alone or in combination all the features of the claimed invention as a whole, including inter alia:
a portion of at least one of the plurality of expansion limiters is inserted through a hole formed in the upper roof surface material and secured against an upper surface of the upper roof surface material, as recited in claim 21;
the plurality of expansion limiters are substantially taut; and the plurality of expansion limiters prevent further vertical displacement of the upper roof surface material, as recited in claim 23; and
a plate having an aperture; and a fastener having a flange, wherein: at least one of the plurality of expansion limiters is a rigid expansion limiter; and the fastener is inserted through the aperture in the plate and through a portion of a top end of the rigid expansion limiter such that the flange prevents the fastener from pulling through the aperture, as recited in claim 25.
It would have been beyond the level of ordinary skill to combine or modify Record, or any of the cited prior art references of record to arrive at the claimed invention of claims 21, 23 and 25.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 5-8 and 22, 24 and 26-33 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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 JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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