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 .
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 5, 7-8, 15 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.
Regarding claim 5, it is unclear how the intersection differs from the junction previously established in the claims. The examiner will examine as best understood with the junction and the intersection one in the same. Appropriate correction is required.
Claims 7, 8, and 15 recite the limitation "the insulating panel" in line 1. There is insufficient antecedent basis for this limitation in the claim. A composite panel and an insulating subpanel have previously been established in the claims. The examiner will examine as best understood with the limitation meant to be towards the insulating subpanel. Appropriate correction is required.
Regarding claim 8, it is unclear the density being claimed, as lb/sqft is a measurement of Force/pressure on a flat surface. The examiner will examine as best understood. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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, 3, 10, 12, 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Byrd, U.S. Patent Application Publication 2004/0226247.
Regarding claim 1, Byrd discloses a roofing panel comprising: an insulating subpanel (2) having a bottom face (bottom of 2 as shown in Fig. 2) to be secured to a substrate and a top face (upper face of 2 as shown in Fig. 2) opposed to the bottom face, the top face and the bottom face delimited by interconnected edges of the insulating subpanel (6/7, see Fig. 2, generally); a polymer membrane (3; paragraph 22) adhered to a portion of the top face, the polymer membrane including a flap (4/5), the flap extending from a membrane edge (outer edge of 4/5) of the membrane to a junction (see Fig. 4, paragraph 18, where the membrane is not bonded along the panel top face) between the flap and a remainder of the polymer membrane (paragraph 18, membrane portion bonded to panel top surface), the junction being recessed inwardly from an edge of the interconnected edges of the insulating subpanel such that a portion of the top face of the insulating subpanel is free from attachment to the polymer membrane (paragraph 17), a length of the flap extending from the membrane edge to the junction being greater than a distance between the edge of the interconnected edges and the junction (paragraph 17; see figures, generally).
Regarding claim 3, Byrd discloses a roofing panel comprising an adhesive applied to the flap (paragraph 27).
Regarding claim 10, Byrd discloses a roofing panel comprising fastener-receiving locations (on 2 beneath 3; paragraph 18) for receiving fasteners through the insulating subpanel, the fastener-receiving locations located within the portion of the top face free from attachment to the polymer membrane (paragraph 18). The phrase “for receiving fasteners through the insulating subpanel” is a statement of intended use of the claimed invention and 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.
Regarding claim 12, Byrd discloses a roof panel assembly comprising: a first composite panel (1) and a second composite panel (adjacent panel 1, see Fig. 4) located adjacent the second composite panel, the first composite panel having: an insulating subpanel (2) having a bottom face (bottom surface of 2) to be secured to a substrate and a top face (upper face of 2) opposed to the bottom face, the top face and the bottom face delimited by interconnected edges (6, 7) of the insulating subpanel; a polymer membrane (3, paragraph 22) adhered to a portion of the top face (paragraph 22), the polymer membrane including a flap (4/5), the flap ending at a membrane edge located outwardly of the insulating subpanel (distal edge of 3; see Fig. 2) and overlapping a joint between the first composite panel and the second composite panel (see Fig. 4).
Regarding claim 16, Byrd discloses a roof panel assembly wherein the flap is secured to the insulating subpanel and to the second composite panel via an adhesive (paragraph 22).
Claim Rejections - 35 USC § 103
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 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, 4, 6-7, 15, 17, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrd, U.S. Patent Application Publication 2004/0226247.
Regarding claim 2, Byrd discloses a roofing panel but does not specifically disclose wherein the length is about twice the distance between the edge of the interconnected edges and the junction. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the flap with an adequate length to effectively seal the seam between adjacent panels, and 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. In re Aller, 105 USPQ 233
Regarding claim 4, Byrd discloses a roofing panel but does not specifically disclose a release membrane in contact and overlapping the adhesive, the release membrane removable from the flap. Byrd does disclose that the adhesive may be provided on the tabs/flaps during manufacturing of the panels (paragraph 27). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that a release membrane/liner would be needed to protect the applied adhesive during shipping and until the panels are ready to be assembled.
Regarding claim 6, Byrd discloses a roofing panel but does not specifically disclose wherein a width of the flap is about 6 inches. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the flap with an adequate length such as 6 inches to effectively seal the seam between adjacent panels, and 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. In re Aller, 105 USPQ 233
Regarding claims 7 and 15, Byrd discloses a roofing panel but does not specifically disclose wherein the insulating panel is made of one or more of polyisocyanurate, polystyrene, fiber, stone wool, and rock wool. Byrd does teach the subpanel/core may be a polymer (paragraph 21). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a polymer, specifically a polystyrene, due to its lightweight and insulative properties, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin,125 USPQ 416.
Regarding claim 17, Byrd discloses a roofing panel including an insulating subpanel (2) and a polymer membrane (3) adhered to the insulating subpanel (abstract), the method comprising: disposing the composite panel on a substrate of the roof (the roof, paragraph 23); lifting a flap (4/5)of the polymer membrane thereby exposing an edge portion (6/7) of the insulating subpanel and fastening the insulating subpanel to the substrate (via nails, paragraph 18); and adhering the flap to both of the edge portion of the insulating subpanel and to an adjacent composite panel (paragraph 27). Although specific method steps are not disclosed, the resulting structure is provided and therefore the method is obvious.
Regarding claim 19, Byrd discloses a roofing panel but does not specifically disclose wherein the adhering of the flap includes peeling of a release membrane disposed on the flap to expose an adhesive and adhering the flap using the adhesive. Byrd does disclose that the adhesive may be provided on the tabs/flaps during manufacturing of the panels (paragraph 27). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that a release membrane/liner would be needed to protect the applied adhesive during shipping and until the panels are ready to be assembled.
Claim(s) 5, 13, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrd, U.S. Patent Application Publication 2004/0226247 in view of Wambaugh et al., U.S. Patent 8,959,861.
Regarding claim 5, Byrd discloses a roofing panel wherein the flap includes a proximal section (adjacent the main membrane section at the subpanel edge) and a distal section (outer membrane edge section), the proximal section located between the distal section and an intersection between the flap and the remainder of the polymer membrane, the distal section being free of the adhesive (when the adhesive is provided afterwards per paragraph 27), but does not specifically disclose the adhesive located on the proximal section while the distal section is free of the adhesive. Wambaugh teaches that adhesive (40) is not applied uniformly on the flap/tab (Fig. 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply adhesive in such a manner that it is located on the proximal section while the distal section is free of the adhesive depending on the manner in which the adhesive is applied (proximal section to distal section).
Regarding claim 13, Byrd discloses a roofing panel but does not specifically disclose wherein the flap overlaps the joint, a first row of fasteners extending through the insulating subpanel, and a second row of fasteners extending through a second insulating subpanel of the second composite panel. Byrd does state that nails may be positioned at the edges of the panels (paragraph 26). Wambaugh teaches the overlap membrane portion (24) overlapping the joint and rows of fasteners along panel edges of two adjacent panels (see Fig. 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that, if fasteners are to be used, the flap portion covers and seals the adjacent panel fasteners to prevent the panels from allowing moisture to penetrate at the fastener locations.
Regarding claim 18, Byrd discloses a roofing panel but does not specifically disclose wherein the adhering of the flap includes covering both of a joint between the insulating subpanel and the adjacent composite panel and a row of fasteners extending through the adjacent composite panel. Byrd does state that nails may be positioned at the edges of the panels (paragraph 26). Wambaugh teaches the overlap membrane portion (24) overlapping the joint and rows of fasteners along panel edges of two adjacent panels (see Fig. 3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention that, if fasteners are to be used, the flap portion covers and seals the adjacent panel fasteners to prevent the panels from allowing moisture to penetrate at the fastener locations.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrd, U.S. Patent Application Publication 2004/0226247 in view of Griffin et al., U.S. Patent Application Publication 2006/0096213.
Regarding claim 8, Byrd discloses a roofing panel, but does not disclose wherein the insulating panel has a density of from 80 to 140 lb/ft2, inclusively. Griffin teaches a roofing panel comprising a similar material (polystyrene, paragraph 13). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize polystyrene for the insulative subpanel, the density then being similar to that of the present invention, due to its lightweight and insulative properties, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin,125 USPQ 416.
Regarding claim 9, Byrd discloses a roofing panel but does not specifically disclose wherein the polymer membrane is made of one or more of thermoplastic polyolefin and polyvinyl chloride. Griffin teaches a roofing panel comprising a membrane of one or more of thermoplastic polyolefin and polyvinyl chloride (paragraph 15). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a TPO or PVC membrane due to their waterproofing properties, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin,125 USPQ 416.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrd, U.S. Patent Application Publication 2004/0226247 in view of Watkins, U.S. Patent 4,450,663.
Regarding claim 11, Byrd discloses a roofing panel but does not disclose wherein the fastener-receiving locations are defined by fastening apertures, reinforcing inserts received within the fastening apertures. Watkins teaches holes (screw holes, col. 6, lines 12-15, and 10) and reinforcing inserts (15c). it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide these holes and reinforcements to maintain the structural integrity of the panels when fasteners are utilized.
Claim(s) 14, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byrd, U.S. Patent Application Publication 2004/0226247 inview of Michaud, U.S. Patent 4,936,070.
Regarding claim 14, Byrd discloses a roof panel system wherein the flap is bonded to a second polymer membrane of the second composite panel (paragraph 27), but does not specifically disclose the elements have been bonded by fusing. Michaud teaches fusing of the membrane overlapping portion of adjacent panels (abstract). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fuse the flap over the panel joint to provide adequate sealing of the panel joint section area.
Regarding claim 20, Byrd discloses a roofing panel wherein the adhering of the flap further includes adhering a distal section of the flap to a second polymer membrane of the adjacent composite panel (as shown in Fig. 4), but does not specifically disclose adhering by fusing. Michaud teaches fusing of the membrane overlapping portion of adjacent panels (abstract). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fuse the flap over the panel joint to provide adequate sealing of the panel joint section area.
Conclusion
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GISELE D. FORD
Examiner
Art Unit 3633
/GISELE D FORD/Examiner, Art Unit 3633
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