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 Group I in the reply filed on 1/26/26 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/26/26.
Double Patenting
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12054955_B2. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 1-17 teach and/or suggest all of the claimed limitations of instant, independent Claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jakel USPN_5323581 in view of Stanhope USPA_20160244598_A1 and Dong EP_3412640_A1.
1. Regarding Claim 1, Jakel discloses a polymeric-based (column 3 line 47-48) building material (fig. 1, 50) having a top end, a bottom end, a left end, a right end, an outer surface, an inner surface, a first contacting portion (fig. 1, inner surface contacting 62), a second contacting portion (fig. 1, inner surface contacting top surface of next material 50) parallel to the first horizontal plane of the outer surface, a recessed portion (57), the second horizontal plane of the second contacting surface is oriented with respect to the third horizontal plane of the first contacting portion (Fig. 1), the angle between a top surface and a first contacting surface of the first contacting portion is about 90 degrees (Fig. 1). This arrangement will fulfill the limitations of the claimed sides being both opposite to one another and spaced apart from one another.
2. However, Jakel does not disclose the claimed use of fiber additives having the claimed orientation/direction.
3. Stanhope discloses a polymer composite useable in building applications (Abstract) that can comprise wollastonite fibers that reduces moisture sensitivity and reduced flame and smoke spread, while at the same time enhancing mechanical properties (paragraph 0029).
4. Dong discloses forming plates used in building structures (paragraph 0002). Dong discloses how wollastonite (corresponds to claimed fiber additive) is easily oriented in the direction of extrusion, resulting in an anisotropic strength of the finished product, a high strength in the direction of the vertical extrusion, and a low strength in the direction of the parallel extrusion (paragraph 0003).
5. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the material, of Jakel, with use of wollastonite fibers, as disclosed by Stanhope. One of ordinary skill in the art would have been motivated in doing so in order to enhance mechanical properties, reduce flame and smoke spread. Furthermore, it would have been obvious to vary the concentration and dimensions of the wollastonite fibers based on the desired degree of anisotropic and strength properties. Moreover, it would have been obvious to orient the wollastonite as disclosed by Dong – to the direction of the direction of extrusion which would be towards the ends of the plate.
6. Regarding Claims 2-4, Jakel in view of Stanhope and Dong suggests an inner surface that has contacting portions with a recessed portion there-between whilst said portions having a horizonal planar surface (Jakel: Fig. 1). The thicknesses can be varied so as to meet the limitations of instant Claims 3 and 4.
7. Regarding Claims 5 and 7, Jakel in view of Stanhope and Dong does not explicitly suggest these exact dimensions. Although Jakel does not disclose the claimed same specific dimensions and material it would have been obvious to one of ordinary skill in the art at the time of the invention to change such dimensions of said building material, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the product having the claimed dimensions would not perform differently than the prior art, the claimed product is not patentably distinct from the prior art, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It is well known in the art that changes in size and other design parameters are taken into consideration when determining the such distances being claimed. Applicants have not shown how these instantly claimed distances result in unexpected and surprising properties.
8. Regarding Claim 6 and 9, Jakel in view of Stanhope and Dong suggests using a cap (Stanhope: paragraph 0006).
9. Regarding Claims 10 and 11, Jakel in view of Stanhope and Dong suggests using Wollastonite fibers as mentioned above. The exact concentration would be dependent upon the aforementioned properties that are desired in the end-product.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jakel USPN_5323581 in view of Stanhope USPA_20160244598_A1 and Dong EP_3412640_A1, as applied to Claims 1-7 and 9-11, and further in view of Watson 20060101768_A1.
10. Regarding Claim 8, Jakel in view of Stanhope and Dong does not suggest the claimed polymers.
11. Watson discloses using pvc (paragraph 0022) in building boards (Title) suitable for use on the side of a building (Abstract).
12. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the polymer, of Jakel in view of Stanhope and Dong, by trying the use of PVC, of Watson. One of ordinary skill in the art would have been motivated in doing so in order to try other polymers mentioned in the same field of endeavor out of a desire for optimization of properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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, Frank Vineis can be reached on 5712701547. 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.
/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 February 15, 2026