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 .
Withdrawn Rejections
The 35 U.S.C. 112(b) rejection of claims 19-36 of record in the previous Office Action mailed on 5/27/2026 has been withdrawn due to Applicant’s amendment filed on 7/9/2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 39 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The new limitation “the flexible plastic membrane having a tensile strength equal to or greater than 27.6 MPa” is deemed new matter. The Specification, as originally filed, does not provide support for this new limitation. The Specification states “the flexible membrane has a tensile strength equal to or greater than 27.6 to 34.5 MPa” (see paragraph [0130]). There is no upper limit recited in new claim 39 for the tensile strength range. Claim 39 recites “equal to or greater than 27.6 MPa”, which could include a tensile strength higher than 34.5 MPa, and there is no support provided in the Specification for a tensile strength greater than 34.5MPa. Thus, the new limitation of new claim 39 is deemed new matter.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 19-22, 25-33, 35-38 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sealock et al. (US 2013/0318911) [hereinafter Sealock].
Regarding claim 19, Sealock discloses a structural membrane bracing (Figs. 2-4), comprising a flexible plastic membrane (barrier layer 30; paragraphs [0061-0063]; or membrane layer; paragraph [0085]) laminated to insulation (21), and the flexible plastic membrane being an air, water or vapor barrier (paragraphs [0015] and [0061-0063]). The limitation “the flexible plastic membrane providing a wall, floor or roof bracing element when attached to a building or similar structure” is a functional limitation and is deemed to be an inherent characteristic of the prior art, since the flexible plastic membrane of Sealock comprises a plastic film or sheet which is substantially identical to that of the claimed flexible plastic membrane. See MPEP 2114.
Regarding claim 20, Sealock discloses a seal or tape between a first section of the structural bracing and a second section of the structural bracing (paragraph [0017]).
Regarding claim 21, Sealock discloses a reinforcing layer located at anticipated fastener locations (paragraph [0057]).
Regarding claim 22, Sealock discloses a graphic of intended fastener locations (Fig. 3, indicia 37).
Regarding claim 25, Sealock discloses the insulation comprising a continuous wall insulation (Fig. 7, layer 131; paragraph [0006]).
Regarding claim 26, Sealock discloses the flexible plastic membrane configured to be installed as an exterior wall layer and covered by exterior cladding (Fig. 7; paragraphs [0005] and [0145]).
Regarding claim 27, Sealock discloses the structural membrane bracing, when installed, having sufficient shear capacity to qualify as a braced wall panel (paragraph [0137]).
Regarding claim 28, Sealock discloses the flexible plastic membrane being inorganic material (paragraphs [0061-0062] and [0085]).
Regarding claim 29, Sealock discloses the flexible plastic membrane being non-metallic material (paragraphs [0061-0062] and [0085])
Regarding claim 30, Sealock discloses the flexible plastic membrane being inorganic and non-metallic material (paragraphs [0061-0062] and [0085]).
Regarding claim 31, Sealock discloses the flexible plastic membrane being a fabric, film, skin or sheet (Fig. 2, barrier layer 30; paragraph [0052]; or membrane; paragraph [0085]).
Regarding claim 32, Sealock discloses the flexible plastic membrane including a non-slip pattern, or a texture (Fig. 4, texture 35; paragraphs [0068-0070]).
Regarding claim 33, Sealock discloses the flexible plastic membrane including a fire retardant (paragraph [0134]).
Regarding claim 35, Sealock discloses the structural membrane bracing forming, when installed, a bracing element with one or both of: a nominal unit seismic shear capacity of 50 plf or greater, or a nominal unit wind shear capacity of 50 plf or greater (Table 5; paragraph [0137]).
Regarding claim 36, Sealock discloses the flexible plastic membrane being UV stable (paragraphs [0059], [0119] and [0134]).
Regarding claim 37, Sealock discloses the flexible plastic membrane configured to attach to framing (Figs. 7-8, frame 115; paragraph [0114]).
Regarding claim 38, Sealock discloses the flexible plastic membrane including a plurality of layers (Fig. 8, layers 132 and 134; paragraphs [0119-0120] and [0085]).
Regarding claim 41, Sealock discloses the insulation comprising a rigid panel of insulation (paragraphs [0078-0083]).
Claims 19-31, 33 and 37-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by West et al. (US 3,856,891) [hereinafter West].
Regarding claim 19, West discloses a structural member bracing, comprising a flexible plastic membrane (sheeting) laminated to insulation, and the flexible plastic membrane being an air, water or vapor barrier (col. 3, lines 25-55). The limitation “the flexible plastic membrane providing a wall, floor or roof bracing element when attached to a building or similar structure” is a functional limitation and is deemed to be an inherent characteristic of the prior art, since the flexible plastic membrane of West comprises a plastic sheet having a thickness of less than 1/16 inch and having a tensile strength greater than 500 psi which is substantially identical to that of the claimed flexible plastic membrane. See MPEP 2114.
Regarding claim 20, West discloses a seal between a first section of the structural bracing and a second section of the structural bracing (col.3, lines 13-24 and lines 50-55; col. 8, lines 43-52).
Regarding claim 21, West discloses a reinforcing layer located at anticipated fastener locations (col. 3, lines 13-25 and col. 8, lines 35-42).
Regarding claim 22, West discloses a graphic of intended fastener locations (col. 3, lines 13-23).
Regarding claim 23, West discloses the flexible plastic membrane having a thickness of less than 1/8 inch (col. 4, lines 28-31 and col. 8, lines 25-28).
Regarding claim 24, West discloses the flexible plastic membrane having a thickness of less than 1/16 inch (col. 4, lines 28-31 and col. 8, lines 25-28).
Regarding claim 25, West discloses the insulation comprising a continuous wall insulation (col. 3, lines 30-45).
Regarding claim 26, the limitation “configured to be installed as an exterior wall layer and covered by exterior cladding” recites a recitation of the intended use of the claimed invention. It has been held that a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As shown above, West clearly teaches all the structural limitations of the claimed flexible plastic membrane. Accordingly, the membrane of West is capable of performing the intended use recited in claim 26.
Regarding claim 27, the limitation “when installed, the structural membrane bracing has sufficient shear capacity to qualify as a braced wall panel” is a functional limitation and is deemed to be an inherent characteristic of the prior art, since the membrane is sheet plastic and has a tensile strength of greater than 500 psi, as tested by ASTM D412 modified, which is substantially identical to that of the claimed membrane. See MPEP 2114.
Regarding claim 28, West discloses the flexible plastic membrane being inorganic material (claims 1-6; col. 8, lines 35-43).
Regarding claim 29, West discloses the flexible plastic membrane being non-metallic material (claims 1-6).
Regarding claim 30, West discloses the flexible plastic membrane being inorganic and non-metallic material (claims 1-6; col. 8, lines 35-43).
Regarding claim 31, West discloses the flexible plastic membrane being a film, skin or sheet (col. 8, lines 42-46).
Regarding claim 33, West discloses the flexible plastic membrane including a fire retardant (col. 7, lines 62-68).
Regarding claim 37, the limitation “configured to attach to framing” recites a recitation of the intended use of the claimed invention. It has been held that a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As shown above, West clearly teaches all the structural limitations of the claimed flexible plastic membrane. Accordingly, the membrane of West is capable of performing the intended use recited in claim 37.
Regarding claim 38, West discloses the flexible plastic membrane including a plurality of layers (col. 8, lines 35-42).
Regarding claim 39, West discloses the flexible plastic membrane having a tensile strength equal to or greater than 27.6 MPa (Tables III-V).
Regarding claim 40, West discloses the flexible plastic membrane having a tensile strength greater than 500 psi as tested by ASTM D412 modified (Tables I-V).
Regarding claim 41, West discloses the insulation comprising a rigid panel of insulation (col. 3, lines 30-55).
Claims 19-31, 33-35, 37, 38 and 41 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Giles (US 2022/0412081).
Regarding claim 19, Giles discloses a structural membrane bracing (Figs. 2-4), comprising a flexible plastic membrane (facer; paragraphs [0046]; or sheathing; paragraphs [0029-0031]) laminated to insulation (foam panel 70), and the flexible plastic membrane being an air, water or vapor barrier (paragraph [0046]). The limitation “the flexible plastic membrane providing a wall, floor or roof bracing element when attached to a building or similar structure” is a functional limitation and is deemed to be an inherent characteristic of the prior art, since the flexible plastic membrane of Giles comprises a plastic film or sheet having a thickness of less than 1/16 inch which is substantially identical to that of the claimed flexible plastic membrane. See MPEP 2114.
Regarding claim 20, Giles discloses a seal or tape between a first section of the structural bracing and a second section of the structural bracing (paragraphs [0091] and [0102]).
Regarding claim 21, Giles discloses a reinforcing layer located at anticipated fastener locations (Fig. 3; paragraphs [0032-0034] and [0046]).
Regarding claim 22, Giles discloses a graphic of intended fastener locations (Fig. 3, fasteners 92).
Regarding claim 23, Giles discloses the flexible plastic membrane having a thickness of less than 1/8 inch (paragraph [0031]).
Regarding claim 24, Giles discloses the flexible plastic membrane having a thickness of less than 1/16 inch (paragraph [0031]).
Regarding claim 25, Giles discloses the insulation comprising a continuous wall insulation (Figs. 4-6, layer 30; paragraphs [0098] and [0194]).
Regarding claim 26, Giles discloses the flexible plastic membrane configured to be installed as an exterior wall layer and covered by exterior cladding (Figs. 5-6; paragraph [0033]).
Regarding claim 27, Giles discloses the structural membrane bracing, when installed, having sufficient shear capacity to qualify as a braced wall panel (paragraph [0100]).
Regarding claim 28, Giles discloses the flexible plastic membrane being inorganic material (paragraphs [0030] and [0046]).
Regarding claim 29, Giles discloses the flexible plastic membrane being non-metallic material (paragraphs [0030] and [0046]).
Regarding claim 30, Giles discloses the flexible plastic membrane being inorganic and non-metallic material (paragraphs [0030] and [0046]).
Regarding claim 31, Giles discloses the flexible plastic membrane being a fabric, film, skin or sheet (paragraphs [0030] and [0046]).
Regarding claim 33, Giles discloses the flexible plastic membrane including a fire retardant (paragraph [0076]).
Regarding claim 34, Giles discloses the flexible plastic membrane having a flame spread index of not more than 25 and a smoke-developed index of not more than 450 when tested in accordance with ASTM E84 (paragraph [0049]).
Regarding claim 35, Giles discloses the structural membrane bracing forming, when installed, a bracing element with one or both of: a nominal unit seismic shear capacity of 50 plf or greater, or a nominal unit wind shear capacity of 50 plf or greater (Table 2; paragraph [0195]).
Regarding claim 37, Giles discloses the flexible plastic membrane (facer) configured to attach to framing (Figs. 2-4, frame members 12, 14, 16 and 17; paragraphs [0037-0039]).
Regarding claim 38, Giles discloses the flexible plastic membrane including a plurality of layers (paragraph [0046]).
Regarding claim 41, Giles discloses the insulation comprising a rigid panel of insulation (paragraphs [0044] and [0049]).
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.
Claims 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Sealock as applied to claim 19 above.
Sealock teaches the claimed structural membrane bracing as shown above but fails to specifically teach the thickness being less than 1/8 inch and less than 1/16 inch. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the flexible plastic membrane in Sealock to have a thickness of less than 1/8 inch and less than 1/16 inch, 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. MPEP 2144.05 (II).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Giles in view of Sealock.
Giles teaches the claimed structural membrane bracing as shown above but fails to teach the flexible plastic membrane including a non-slip pattern or a texture.
Sealock teaches an insulated sheathing panel wherein the flexible membrane (30) has a textured surface (35) in order to provide slip resistance (paragraphs [0068-0070]).
Giles and Sealock both teach wall panels and therefore are analogous art.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify flexible plastic membrane in Giles to have a textured surface as suggested by Sealock in order to provide slip resistance, if so desired.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over West in view of Sealock.
West teaches the claimed structural membrane bracing as shown above but fails to teach the flexible plastic membrane including a non-slip pattern or a texture.
Sealock teaches an insulated sheathing panel wherein the flexible membrane (30) has a textured surface (35) in order to provide slip resistance (paragraphs [0068-0070]).
West and Sealock both teach membranes for use in construction and therefore are analogous art.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify flexible plastic membrane in West to have a textured surface as suggested by Sealock in order to provide slip resistance, if so desired.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Giles in view of Bryant (US 6,314,704).
Giles teaches a structural membrane bracing as shown above but fails to teach the flexible plastic membrane being UV stable.
Bryant teaches a building panel wherein ultraviolet inhibitors can be added to exterior skins in order to protect the panel from damage due to exposure to sunlight.
Giles and Bryant both teach building/wall panels and therefore are analogous art.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the flexible plastic membrane in Giles to include UV inhibitors as suggested by Bryant in order to form a UV stable flexible plastic membrane that protects the panel from damage due to exposure to sunlight.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over West in view of Bryant (US 6,314,704).
West teaches a structural membrane bracing as shown above but fails to teach the flexible plastic membrane being UV stable.
Bryant teaches a building panel wherein ultraviolet inhibitors can be added to exterior skins in order to protect the panel from damage due to exposure to sunlight.
West and Bryant both teach building structures and therefore are analogous art.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the flexible plastic membrane in West to include UV inhibitors as suggested by Bryant in order to form a UV stable flexible plastic membrane that protects the panel from damage due to exposure to sunlight.
Response to Arguments
Applicant's arguments filed 7/9/2026 have been fully considered but they are not persuasive.
Applicant argues “In Sealock it is the ‘insulated panels’ that ‘can be used as braced wall panels’. In other words, it is not a flexible plastic membrane that serves as a bracing element, but instead a composite ‘insulated panel’ that serves as bracing. This is different than the requirements of claim 19 which require the flexible plastic membrane to provide a wall, floor or roof bracing element.”
As shown in the 102 rejection above, the limitation “the flexible plastic membrane providing a wall, floor or roof bracing element when attached to a building or similar structure” now recited in claim 19 is a functional limitation and is deemed to be an inherent characteristic of the membrane in Sealock, since the membrane of Sealock is a plastic sheet or film which is substantially identical to that of the claimed flexible plastic membrane. Accordingly, claim 19 is anticipated by Sealock, and claims 20-22, 25-33, 35 and 36, which depend from claim 19, are also anticipated by Sealock. In addition, claims 23-24 are unpatentable over Sealock, since they depend from claim 19.
Applicant further argues “In Giles it is the ‘high density structural foam layer’ that ‘provides a wall structure exhibiting high racking shear strengths’. In other words, it is not a flexible plastic membrane that serves as a bracing element, but instead a composite ‘high density structural foam layer’ that serves as bracing. This is different than the requirements of claim 19, which require the flexible plastic membrane to provide a wall, floor or roof bracing element”.
As shown in the 102 rejection above, the limitation “the flexible plastic membrane providing a wall, floor or roof bracing element when attached to a building or similar structure” now recited in claim 19 is a functional limitation and is deemed to be an inherent characteristic of the membrane in Giles, since the membrane of Giles is a plastic sheet or film having a thickness of less than 1/16 inch which is substantially identical to that of the claimed flexible plastic membrane. Accordingly, claim 19 is anticipated by Giles, and claims 20-31 and 33-35, which depend from claim 19, are also anticipated by Giles.
Conclusion
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 CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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