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 of claims 1-38 and 44 in the reply filed on July 6, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 2, 10-15, 17-20, 22-32, 34-36, 38, 44 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 2 recites the limitation “the structurally stable panel” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 10-13, 15, 17 recite the limitation “the insulation layer” in line 1. There is insufficient antecedent basis for this limitation in the claims. The Examiner notes the claims were considered for examination purposes as reciting “the first insulation layer.”
Claim 14 recites the limitation “the system” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites “the panel” in line 2. The recitation is not clear. The Examiner notes the claim was considered for examination purposes as reciting “the first structurally stable panel.”
Claim 18 recites “the panel” in line 3. The recitation is not clear. The Examiner notes the claim was considered for examination purposes as reciting “the first structurally stable panel.”
Claim 19 recites “each panel and barrier layer” in line 1. It is not clear which panel and barrier layer the claim refers to.
Claim 20 recites the limitation “the barrier layer” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites “said panel” in line 1. It is not clear which panel the claim refers to.
Claim 23 recites the limitation “the structurally stable panel” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites “other plant-based materials” in line 2. It is not clear what are the first or original “plant-based materials.” The components of the panel must be clearly and positively specified.
Claim 23 recites a phrase “By way of example, other grasses include” in line 28. Claim 23 is indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention (MPEP 2173.05(d)).
Claim 24 recites the limitation “the structurally stable panel” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation “the wood-composite panel” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation “the lignocellulosic component” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation “the plant-based materials” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites “the wood composite panel” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation “other plant-based material” in lines 2-3. The claim is not clear as it is not clear what is meant by “other plant-based material.”
Claim 27 recites “said thermoplastic binder material” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 28 recites “said thermoplastic binder material” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 29 recites “said binder material” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 30 recites “said binder material” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 31 recites “said binder material” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites “said binder material” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 34 recites “other plant-based material portions” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 35 recites “other plant-based material portions” in line 4. It is not clear what are “other” plant-based material portions.
Claim 35 recites “said other plant-based material portions” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 36 recites the limitation “said structurally stable panel” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 36 recites the limitation “layer comprising other plant-based material” in lines 1-2. The claim should recite “a layer.” Furthermore, it is not clear what is “other” in “other plant-based material.”
Claim 38 recites the limitation “at least one panel is according to the IWS panel” in line 2. The phrase “according to the IWS panel” is not clear.
Claim 44 recites the limitation “other plant-based material portions” in line 3. The phrase “other” is not clear; what are the first or original plant-based material portions?
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) 1-22, 36-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCary (US 2011/0296781 A1), in view of Sealock et al. (US 2011/0154466 A1) (“Sealock”) and Brooks, III (US 2019, 0316352 A1) (“Brooks”).
With respect to claim 1, McCary discloses a first IWS panel for construction purposes (abstr.), comprising a first insulation layer – element 46 – having an outer surface and an inner surface, and a first WRB layer having an outer surface and an inner surface – element 44 (0024, Fig. 4). McCary is silent with respect to a first structurally stable panel as recited in the claim, the inner surface of the first insulation layer being planarly and contactably attached to the outer surface of the first structurally stable panel. Sealock discloses an insulated wall panel (abstr.) comprising a first structurally stable panel – element 20 – having an outer surface and an inner surface, wherein the inner surface of an insulation layer – element 21 – is planarly and contactably attached to the outer surface of the first structurally stable panel (0053-0055, 0126-0128, Figs. 2, 4, 8). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the panel of McCary a first structurally stable panel wherein the inner surface of the first insulation layer is planarly and contactably attached to the outer surface of the first structurally stable panel as it is known in the art of insulation panels to attach structurally stable panels to insulation panels as disclosed in Sealock, for building construction (0002).
It would be obvious to one of ordinary skill in the art that in the panel of McCary and Sealock the WRB layer would be secured to the outer surface of the first structurally stable panel through an adhesive layer (Sealock, 0126).
Regarding the WRB layer exceeding the dimension of the first structurally stable panel from at least one of its edges to create an extension flap, the extension flap comprising a removably attached release liner attached to the WRB layer’s inner surface, Brooks discloses a structural panel (abstr.) comprising a WRB exceeding a dimension of its underlayment (0007, 0027, 0030) creating an extension flap (Figs. 2, 6, 8), the extension flap comprising a removably attached release liner attached to the WRB’s inner surface (0032). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the WRB layer of McCary as disclosed in Brooks to allow for proper water removal from the panel (Brooks, 0010).
Regarding claim 2, McCary, Sealock and Brooks teach the panel of claim 1. Sealock discloses the first structurally stable panel is a wood-composite panel (0053).
As to claim 3, McCary, Sealock and Brooks teach the panel of claim 2. Sealock discloses the wood-composite panel is a lignocellulosic panel (0053).
With respect to claim 4, McCary, Sealock and Brooks teach the panel of claim 3. Sealock discloses the lignocellulosic panel is an OSB panel (0053).
Regarding claim 5, McCary, Sealock and Brooks teach the panel of claim 1. McCary discloses a weather resistive barrier WRB (0024), thus, it would be obvious to one of ordinary skill in the art to form the WRB layer substantially bulk water resistant and substantially water vapor permeable (0024). Brooks discloses WRB as a water resistant barrier product (0027).
As to claim 6, McCary, Sealock and Brooks teach the panel of claim 1. Brooks discloses the extension flap being continuous along the length of the edge from which its extends beyond the panel (Figs. 2 and 5).
With respect to claim 7, McCary, Sealock and Brooks teach the panel of claim 1. Brooks discloses the extension flap in its direction parallel to the edge of the lignocellulosic panel being in a dimension range within the percentage range recited in claim 7 (0027, Fig. 5).
Regarding claim 8, McCary, Sealock and Brooks teach the panel of claim 7. Brooks discloses the extension flap in its direction parallel to the edge of the lignocellulosic panel being in a dimension range within the percentage range of the length of the edge of the panel recited in claim 8 (0027, Fig. 5).
As to claim 9, McCary, Sealock and Brooks teach the panel of claim 8. Brooks implies the release liner – a protective paper or cellophane strip (0032) covers the surface area of the extension flap in a range overlapping the range recited in claim 9; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 10, McCary, Sealock and Brooks teach the panel of claim 1. McCary discloses the first insulation layer is a foam insulation (0024), but is silent with respect to the specific kind of foam as recited in the claim. Sealock discloses the insulation layer comprising polyisocyanurate foam, polystyrene foam, polyurethane foam or their combination (0127). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the first insulation layer of McCary of a foam disclosed in Sealock as it has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 11, McCary, Sealock and Brooks teach the panel of claim 1. Sealock discloses density of the insulation layer in the range recited in the claim (0129).
As to claim 12, McCary, Sealock and Brooks teach the panel of claim 1. Sealock discloses the insulation layer has a water absorption of less than about 10% (0131).
With respect to claim 13, McCary, Sealock and Brooks teach the panel of claim 1. Sealock discloses the insulation layer has a water vapor permeance overlapping the range recited in claim 13 (0132); overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 14, McCary, Sealock and Brooks teach the panel of claim 1. The references are silent with respect to the IWS panel having a thermal resistance as recited in the claim, but since the references disclose all the elements of the panel, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that the thermal resistance of the panel satisfies claim 14.
As to claims 15 and 16, McCary, Sealock and Brooks teach the panel of claim 1. McCary discloses the first insulation layer comprising a membrane layer such as a membrane layer comprising radiant barrier material – element 54 (0024).
With respect to claim 17, McCary, Sealock and Brooks teach the panel of claim 1. Sealock discloses the insulation layer being secured to the panel using an adhesive selected from a phenol-formaldehyde resin, hot-melt adhesive, polyvinyl acetate resin or their combination (0086).
Regarding claim 18, McCary, Sealock and Brooks teach the panel of claim 1. Sealock discloses a barrier layer comprising a resin-impregnated paper substantially covering the outward facing surface of the panel, the resin-impregnated paper having a paper basis weight of 21.772 kg (48 lbs.) to about 102.058 kg. (225 lbs.) per ream and a resin content overlapping the range recited in claim 18 (0061, Fig. 3). Overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
As to claim 19, McCary, Sealock and Brooks teach the panel of claim 18. The references do not disclose specific characteristics as recited in the claim, however, since the references disclose all the elements of the IWS panel as discussed above, it would be obvious to one of ordinary skill in the art that the panel according to the references would perform as intended.
With respect to claim 20, McCary, Sealock and Brooks teach the panel of claim 19. Sealock discloses an outer surface of the barrier layer is textured (0067-0070).
Regarding claim 21, McCary, Sealock and Brooks teach the panel of claim 20. Sealock discloses the textured outer surface provides a wet coefficient of friction in a range of about 0.8 to about 1.1 and a dry coefficient of friction of from about 0.8 to about 1.1 (0067); the dry coefficient of friction overlaps the range recited in claim 21; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
As to claim 22, McCary, Sealock and Brooks teach the panel of claim 1. Sealock discloses the first structurally stable panel comprises an oriented strand board (0053).
With respect to claim 36, McCary, Sealock, and Brooks teach the panel of claim 1. Sealock discloses the first structurally stable panel which is an oriented strand wood composite panel (0053).
Regarding claim 37, McCary, Sealock, and Brooks teach the panel of claim 1. Since the references teach all the elements of the panel, it would be obvious to one of ordinary skill in the art that the panel according to the references has a density that satisfies claim 37.
As to claim 38, McCary, Sealock, and Brooks teach the IWS panel of claim 1. The references do not specify a panel assembly comprising at least two panels juxtaposed and/or adhered to each other, however, duplication of parts has no patentable significance unless new and unexpected result is produced (MPEP 2144.04 (VI)).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCary, in view of Sealock and Brooks, and further in view of Jewett et al. (US 2012/0247046 A1) (“Jewett”).
McCary, Sealock and Brooks teach the panel of claim 1, but are silent with respect to the first structurally stable panel comprising grass as recited in the claim. Jewett discloses a construction panel comprising grass for insulation (0039). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include grass in the first structurally stable panel of McCary as it is known in the art to include grass in the insulation panels. It has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claim(s) 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCary, in view of Sealock and Brooks, and further in view of Korger (US 2008/0220237 A1).
With respect to claim 24, McCary, Sealock and Brooks teach the panel of claim 1, but are silent with respect to the first structurally stable panel comprising flax as recited in the claim. Korger discloses a construction panel comprising flax for insulation (0005, 0006, 0039). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include grass in the first structurally stable panel of McCary as it is known in the art to include flax in the first structurally stable panel for insulation. It has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 25, McCary, Sealock, Brooks and Korger teach the panel of claim 24. Sealock discloses wood in the panel (0053), Korger discloses flax (0005).
Claim(s) 26-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCary, in view of Sealock and Brooks, Korger, and Hurst et al. (US 2013/0089700 A1) (“Hurst”).
As to claims 26, 27, 28, McCary, Sealock, Brooks and Korger teach the panel of claim 25. Sealock discloses the first structurally stable panel comprises plant-based material and a binder (0116). Korger discloses a panel comprising flax (0005). Regarding the amount of “other plant-based material” the Examiner notes the claim was rejected under 35 USC 112(b) above. It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the amount of the “other plant-based material” for insulation and strength purposes. Regarding the amount of a thermoplastic binder, Hurst discloses a plant-based panel comprising 6-15% of a thermoplastic binder by weight (abstr., 0043), the thermoplastic binder comprising high density polyethylene or recycled HDPE (0037, 0038, 0040). The range of the percentage overlaps the range recited in claim 26; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include a thermoplastic binder as disclosed in Hurst, in the first structurally stable panel of McCary, Sealock, Brooks and Korger, as it is known to include HDPE in plant-based panel, in the amount as disclosed in Hurst.
With respect to claim 29, McCary, Sealock, Brooks, Korger and Hurst teach the panel of claim 26. Hurst discloses a formaldehyde-free binder (0018).
With respect to claim 30, McCary, Sealock, Brooks, Korger and Hurst teach the panel of claim 29. Hurst discloses a binder containing no VOC (0019).
Regarding claim 31, McCary, Sealock, Brooks, Korger and Hurst teach the panel of claim 30. Hurst discloses a binder comprising polymeric methylene diphenyl diisocyanate is known in the art (0016).
Regarding claims 32 and 33, McCary, Sealock, Brooks, Korger and Hurst teach the panel of claim 31. Hurst discloses that a binder comprising a protein-based resin such as a soy protein-based resin (0057).
As to claim 34, McCary, Sealock, Brooks, Korger and Hurst teach the panel of claim 26. Hurst discloses a panel includes 86% of other plant-based material, 10% of HDPE, and 2% of PMDI by weight (0084), all weight percentages within the recited ranges.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hurst et al. (US 2013/0089700 A1) (“Hurst”).
With respect to claim 44, Hurst discloses a wood composite panel (abstr.) – the panel may comprise wood (0036), made by the process comprising the steps of combining a binder material and sorghum material to produce a combined material (0069, 0071), wherein the combined material includes 86 wt.% sorghum and 12 wt.% thermoplastic binder (0084), the percentages overlapping the recited ranges, heating and pressing the combined material (0083-0084).
Examiner’s Note
Claim 35 is objected to as being dependent upon a rejected base claim, but would be allowable on the merits if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and amended with respect to the 35 USC 112(b) rejection of the claim.
The following is a statement of reasons for the indication of allowable subject matter: the art of record fails to teach or suggest a panel as recited in claim 35.
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
Prosecution Insights