DETAILED ACTION
This Office action follows the Restriction Requirement set forth on 1/27/2026 and is responsive to applicant’s reply filed on 2/25/2026. Claims 1-20 are pending.
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 Invention I, including claims 1-15, and Species B, embodied by Figure 2 in the reply filed on 2/25/2026 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/25/2026.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
“a length of each vertical standoff is adjustable” (claim 4; note that the length of each of the vertical standoffs 208 in Fig. 2 do not show any adjustable elements or features; note that applicant’s specification as published [0035] states that the vertical standoffs may be set and/or adjustable, but it appears that only the set version is shown).
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, “all vertical space” is indefinite because the limitation lacks antecedent basis. Note that the claim does not previously define a vertical space. This rejection can be overcome by previously in the claim defining a vertical space and further defining an entirety of the vertical space, or equivalent. See also claim 8.
Claim 4, “each vertical standoff” is indefinite because the limitation lacks antecedent basis. This rejection can be overcome by reciting, “each of the vertical standoffs” or equivalent.
The remainder of claims in this section are rejected by virtue of dependency on a rejected base claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 5-6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’).
Claim 1, State teaches a pour in place roofing insulation system, comprising:
an upper roof surface material (8; Fig. 2) that is configured to be vertically spaced apart from a top surface 4 of a roofing structure (Fig. 2);
a plurality of expansion limiters 5 that are configured to extend between the roofing structure and the upper roof surface material (Fig. 2); and
a foam insulation material (17; sprayed polyurethane [0020] “foam” [0026]) that is configured to be disposed between and filling at least substantially all vertical space between the roofing structure and the upper roof surface material (the foam insulation material 17 expands after being applied and rises to fill substantially an entirety of a vertical space between the top surface 4 and the bottom surface of 8, which is located at the top of members 6 and 7; [0020]-[0022]; Fig. 2).
State teaches the foam insulation material being a polyurethane foam, but not a polyiso.
However, Zilberman teaches a pour in place roofing insulation system, comprising a poured or sprayed polyiso foam insulation material [0114] that can be used in any structural component, including a roof structure comprising an upper roof surface material (“coverboards” [0118]) spaced above a roofing structure (“structural deck” [0118]), with the polyiso foam insulation material positioned therebetween [0118]). 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 a 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 5, State further teaches 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 (Fig. 2).
Claim 6, State further teaches wherein: the upper roof surface comprises a roofing coverboard (under the broadest reasonable interpretation, element 8 comprises “plywood” [0020] or “new roof decking” [0022], which constitutes a roofing coverboard, as exceedingly broadly claimed).
Claim 8, as modified above, the combination of State and Zilberman teaches all the limitations of claim 1, and further teaches the roofing structure (State Fig. 2), wherein: the upper roof surface material is vertically spaced apart from a top surface of the roofing structure (State Fig. 2); the plurality of expansion limiters extend between the roofing structure and the upper roof surface material (State Fig. 2); and the polyiso foam insulation material (State foam insulation material; Zilberman polyiso foam) is disposed between and fills at least substantially all vertical space between the roofing structure and the upper roof surface material (State Fig. 2).
Claim(s) 1 and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Glos (US 20200239621).
Claims 1 and 7, State teaches a pour in place roofing insulation system, comprising:
an upper roof surface material (8; Fig. 2) that is configured to be vertically spaced apart from a top surface 4 of a roofing structure (Fig. 2);
a plurality of expansion limiters 5 that are configured to extend between the roofing structure and the upper roof surface material (Fig. 2); and
a foam insulation material (17; sprayed polyurethane [0020] “foam” [0026]) that is configured to be disposed between and filling at least substantially all vertical space between the roofing structure and the upper roof surface material (the foam insulation material 17 expands after being applied and rises to fill substantially an entirety of a vertical space between the top surface 4 and the bottom surface of 8, which is located at the top of members 6 and 7; [0020]-[0022]; Fig. 2).
State teaches the foam insulation material being a polyurethane foam, but not a polyiso.
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 5, State further teaches 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 (Fig. 2).
Claim 6, State further teaches wherein: the upper roof surface comprises a roofing coverboard (under the broadest reasonable interpretation, element 8 comprises “plywood” [0020] or “new roof decking” [0022], which constitutes a roofing coverboard, as exceedingly broadly claimed).
Claim 8, as modified above, the combination of State and Glos teaches all the limitations of claim 1, and further teaches the roofing structure (State Fig. 2), wherein: the upper roof surface material is vertically spaced apart from a top surface of the roofing structure (State Fig. 2); the plurality of expansion limiters extend between the roofing structure and the upper roof surface material (State Fig. 2); and the polyiso foam insulation material (State foam insulation material; Glos polyiso foam) is disposed between and fills at least substantially all vertical space between the roofing structure and the upper roof surface material (State Fig. 2).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’) as above and further in view of South et al. (US 4155967) (‘South’).
Claim 2, State and Zilberman teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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 State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’) as above and further in view of Krumweide (US 4239564).
Claim 2, State and Zilberman teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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 State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’) as above and further in view of Thoeny (US 4550544).
Claim 2, State and Zilberman teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’) as above and further in view of Archer (US 20200173480).
Claim 2, State and Zilberman teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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.).
Claims 3-4, State and Zilberman teach all the limitations of claim 1 as above. State further teaches each of the plurality of expansion limiters comprising a vertical standoff (under the broadest reasonable interpretation, elements 5 constitute a vertical standoff, as exceedingly broadly claimed) State does not teach wherein each of the plurality of expansion limiters comprises a length of each vertical standoff is adjustable. However, Archer teaches an insulation system comprising a plurality of expansion limiters (under the broadest reasonable interpretation, element 110 constitutes an expansion limiter, as exceedingly broadly claimed) comprising a vertical standoff (Figs. 1-3), wherein a length of each vertical standoff is adjustable (under the broadest reasonable interpretation, a length of the expansion limiter is adjustable via a threaded portion, as exceedingly broadly claimed; Figs. 1-3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the plurality of expansion limiters to comprise a vertical standoff that is adjustable, with the reasonable expectation of success of accommodating various thicknesses of insulation, and since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’) as above and further in view of Castles et al. (US 20230053240) (‘Castles’).
Claim 2, State and Zilberman teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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 State (US 20050257491) in view of Glos (US 20200239621) as above and further in view of South et al. (US 4155967) (‘South’).
Claim 2, State and Glos teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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 State (US 20050257491) in view of Glos (US 20200239621) as above and further in view of Krumweide (US 4239564).
Claim 2, State and Glos teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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 State (US 20050257491) in view of Glos (US 20200239621) as above and further in view of Thoeny (US 4550544).
Claim 2, State and Glos teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Glos (US 20200239621) as above and further in view of Archer (US 20200173480).
Claim 2, State and Glos teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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.).
Claims 3-4, State and Glos teach all the limitations of claim 1 as above. State further teaches each of the plurality of expansion limiters comprising a vertical standoff (under the broadest reasonable interpretation, elements 5 constitute a vertical standoff, as exceedingly broadly claimed) State does not teach wherein each of the plurality of expansion limiters comprises a length of each vertical standoff is adjustable. However, Archer teaches an insulation system comprising a plurality of expansion limiters (under the broadest reasonable interpretation, element 110 constitutes an expansion limiter, as exceedingly broadly claimed) comprising a vertical standoff (Figs. 1-3), wherein a length of each vertical standoff is adjustable (under the broadest reasonable interpretation, a length of the expansion limiter is adjustable via a threaded portion, as exceedingly broadly claimed; Figs. 1-3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the plurality of expansion limiters to comprise a vertical standoff that is adjustable, with the reasonable expectation of success of accommodating various thicknesses of insulation, and since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Glos (US 20200239621) as above and further in view of Castles et al. (US 20230053240) (‘Castles’).
Claim 2, State and Glos teach all the limitations of claim 1 as above. State 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 beyond the level of ordinary skill to modify the plurality of expansion limiters to comprise 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) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’) as above and further in view of Walker (US 3738217).
Claims 3-4, State and Zilberman teach all the limitations of claim 1 as above. State further teaches each of the plurality of expansion limiters comprising a vertical standoff (under the broadest reasonable interpretation, elements 5 constitute a vertical standoff, as exceedingly broadly claimed) State does not teach wherein each of the plurality of expansion limiters comprises a length of each vertical standoff is adjustable. However, Walker teaches an insulation system comprising a plurality of expansion limiters (under the broadest reasonable interpretation, element 10 constitutes an expansion limiter, as exceedingly broadly claimed) comprising a vertical standoff (Fig. 1), wherein a length of each vertical standoff is adjustable (under the broadest reasonable interpretation, a length of the expansion limiter that holds the insulation material can be adjusted by repositioning element 17, as exceedingly broadly claimed; Figs. 1-2). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the plurality of expansion limiters to comprise a vertical standoff that is adjustable, with the reasonable expectation of success of accommodating various thicknesses of insulation, and since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954). Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Zilberman et al. (US 20180319947) (‘Zilberman’) as above and further in view of Ekstrom (US 4604846).
Claims 3-4, State and Zilberman teach all the limitations of claim 1 as above. State further teaches each of the plurality of expansion limiters comprising a vertical standoff (under the broadest reasonable interpretation, elements 5 constitute a vertical standoff, as exceedingly broadly claimed) State does not teach wherein each of the plurality of expansion limiters comprises a length of each vertical standoff is adjustable. However, Ekstrom teaches an insulation system comprising a plurality of expansion limiters (under the broadest reasonable interpretation, elements 1 and 2 combined constitute an expansion limiter, as exceedingly broadly claimed) comprising a vertical standoff (Fig. 4), wherein a length of each vertical standoff is adjustable (under the broadest reasonable interpretation, a length of the expansion limiter can be adjusted, as exceedingly broadly claimed; Figs. 1-4). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the plurality of expansion limiters to comprise a vertical standoff that is adjustable, with the reasonable expectation of success of accommodating various thicknesses of insulation, and since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Glos (US 20200239621) as above and further in view of Walker (US 3738217).
Claims 3-4, State and Glos teach all the limitations of claim 1 as above. State further teaches each of the plurality of expansion limiters comprising a vertical standoff (under the broadest reasonable interpretation, elements 5 constitute a vertical standoff, as exceedingly broadly claimed) State does not teach wherein each of the plurality of expansion limiters comprises a length of each vertical standoff is adjustable. However, Walker teaches an insulation system comprising a plurality of expansion limiters (under the broadest reasonable interpretation, element 10 constitutes an expansion limiter, as exceedingly broadly claimed) comprising a vertical standoff (Fig. 1), wherein a length of each vertical standoff is adjustable (under the broadest reasonable interpretation, a length of the expansion limiter that holds the insulation material can be adjusted by repositioning element 17, as exceedingly broadly claimed; Figs. 1-2). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the plurality of expansion limiters to comprise a vertical standoff that is adjustable, with the reasonable expectation of success of accommodating various thicknesses of insulation, and since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954). Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over State (US 20050257491) in view of Glos (US 20200239621) as above and further in view of Ekstrom (US 4604846).
Claims 3-4, State and Glos teach all the limitations of claim 1 as above. State further teaches each of the plurality of expansion limiters comprising a vertical standoff (under the broadest reasonable interpretation, elements 5 constitute a vertical standoff, as exceedingly broadly claimed) State does not teach wherein each of the plurality of expansion limiters comprises a length of each vertical standoff is adjustable. However, Ekstrom teaches an insulation system comprising a plurality of expansion limiters (under the broadest reasonable interpretation, elements 1 and 2 combined constitute an expansion limiter, as exceedingly broadly claimed) comprising a vertical standoff (Fig. 4), wherein a length of each vertical standoff is adjustable (under the broadest reasonable interpretation, a length of the expansion limiter can be adjusted, as exceedingly broadly claimed; Figs. 1-4). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the plurality of expansion limiters to comprise a vertical standoff that is adjustable, with the reasonable expectation of success of accommodating various thicknesses of insulation, and since it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635