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 .
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,514,442. Although the claims at issue are not identical, they are not patentably distinct from each other because each claims a structural material comprising sheathing layers and insulation layers.
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.
Claim(s) 1-2, 4-7, 14-15, 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brooks, III, U.S. Patent Application Publication No. 2022/0136247.
Brooks discloses structural insulation comprising a first upper member, an insulation member and a second lower member, wherein the first and second members sandwich the insulation member and wherein the first and second members are made from a fiber board material having a thickness of less than three sixteenths of an inches. See paragraph 0012. The fibers making up the fibrous layers can be ceramic, glass, hemp, carbon, mineral wool or polymeric. See paragraph 0021. The insulation material can comprise a foam material such as expanded polystyrene or can be polyisocyanurate or polyurethane foam. See paragraph 0023. The layers can either be combined by adhesive or the interior layer can be foamed in place. See paragraph 0024. The sheathing layers can be external layers. The sheathing layers are necessarily engineered since they are formed. The sheathing layers would necessarily form a barrier to weather. Since the sheathing layers can include fiberglass, one of the sheathing layers would meet the limitations of the third layer in claim 15.
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) 2-3, is/are rejected under 35 U.S.C. 103 as being unpatentable over Brooks, III, U.S. Patent Application Publication No. 2022/0136247.
Brooks discloses structural insulation comprising a first upper member, an insulation member and a second lower member, wherein the first and second members sandwich the insulation member and wherein the first and second members are made from a fiber board material having a thickness of less than three sixteenths of an inches. See paragraph 0012. The fibers making up the fibrous layers can be ceramic, glass, hemp, carbon, mineral wool or polymeric. See paragraph 0021. The insulation material can comprise a foam material such as expanded polystyrene or can be polyisocyanurate or polyurethane foam. See paragraph 0023. The layers can either be combined by adhesive or the interior layer can be foamed in place. See paragraph 0024. The sheathing layers can be external layers. The sheathing layers are necessarily engineered since they are formed. The sheathing layers would necessarily form a barrier to weather. Since the sheathing layers can include fiberglass, one of the sheathing layers would meet the limitations of the third layer in claim 15.
With regard to claims 2 and 3, while Brooks discloses the claimed thickness of the sheathing layers, it does not clearly teach that the layers have either the identical or different thicknesses. However, it would have been obvious to one of ordinary skill in the art to have selected the relative thicknesses of each of the sheathing layers, depending on how the layers would be disposed in a structure and what properties were desired in the final product.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brooks in view of Alderman, U.S. Patent No. 5,626,936.
Brooks discloses a building material as set forth above.
Brooks differs from the claimed invention because it does not disclose incorporating a phase change material.
However, Alderman discloses insulation systems for use as building materials which incorporate phase change materials. See col. 7, lines 1-50.
Therefore, it would have been obvious to have incorporated phase change materials into the insulation layer of Brooks in order to provide additional insulating properties to the structure.
Claim(s) 9-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brooks in view of Baldwin et al, U.S. Patent No. 11,298,915.
Brooks discloses a structure as set forth above.
Brooks differs from the claimed invention because it does not clearly teach providing multiple insulation or sheathing layers.
However, Baldwin teaches a structural sheathing board having a polystyrene core layer and including facer layers which have multiple layers applied to each face. See col. 1, line 55 – col. 2, line 17. The facer layers can include a fiberboard layer or layers as well as a polymeric film or metallized or metal foil layer. See col. 3, line 42- col, 4, line 37.
Therefore, it would have been obvious to have employed multiple insulation and/or sheathing layers including outer facing layers formed from films, fabrics and foils as taught by Baldwin in order to provide a structure having the desired properties of strength, insulation, permeability and weather proofness.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. MacAulay, U.S. Patent Application Publication No. 2004/0014382 discloses an insulation board comprising a polystyrene or other foam insulating layer, fiber board outer layers, and various facer layers. MacAulay differs from the claimed invention because it does not disclose the thickness of the fiber board layers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789