DETAILED CORRESPONDENCE
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 invention and/or species, and corresponding claims (1-6 and 8-10) is acknowledged. The election has been made with traverse. Non-elected claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant argues the restriction for the originally present claims does not apply to the newly amended claims. This is not persuasive. See rejection below which demonstrates the newly presented claims also lack unity of invention.
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.
Claim(s) 1-6 and 8-10 is/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 pre-AIA the applicant regards as the invention.
In reference to claim 1, the limitation “firmly” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
It is unclear what firmly attaching is intended to mean in the claims. For example, the cited prior art forms the reinforcing layer integrally with the insulation core. Would this be excluded from the claim?
Claim 6 is similarly rejected for use of “almost”.
Note: Claims 2-6 and 8-10 are also rejected by virtue of their dependence on 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Larkins (US1856644)
In reference to claim 1, Larkins discloses a panel comprising an insulation layer formed by a hardened inorganic foam and at least one structural reinforcing element which is firmly attached to at least one surface of the hardened inorganic foam, wherein the at least one structural reinforcing element is a hardened mortar (Claim 1: porous concrete “aerocrete” with a densified surface)
Larkins discloses that it was known to apply facing to the porous insulation core such as copper sheets (Column 1 at line 45). The Larkins invention is a panel that is an aerocrete core (air entrained porous concrete) with a densified surface layer instead of the copper sheet.
Larkins does not describe the density of the insulation core, but describes the insulation core as being aerocrete. The claimed density is the nominal density of aircrete. Thus, the Larkins core meets the density requirement as obviousness.
Larkins does not describe the relative density of the surface layer with respect to the insulation core, however, Larkins explains that their invention is to take foamed concrete and then apply a roller to densify the surface. Densified concrete has a density of at least 1.5 times the density of aerocrete. Thus, Larkins reads on the claim.
In reference to claim 2-3, Larkins explains that porous concrete provide insulation, however, facing the porous concrete provides other benefits such as improved resilience. Larkin’s claim discloses facing the top of the article, however, it would be obvious to hard face both the top and bottom sides in order to provide both sides of the panel with improved resilience.
In reference to claim 4-5, Larkins uses concrete. The claim reads on concrete.
In reference to claim 6, see rejection of claim 1. he Larkins invention is a panel that is an aerocrete core (air entrained porous concrete) with a densified surface layer instead of the copper sheet. In other words, the reinforcing layer is almost the same as the core insulation layer.
In reference to claim 8, Larkins does not describe the relative density of the surface layer with respect to the insulation core, however, Larkins explains that their invention is to take foamed concrete and then apply a roller to densify the surface. Densified concrete has a density of at least 2.5 times the density of aerocrete. Thus, Larkins reads on the claim.
In reference to claim 9, Larkins does not describe the density of the composite panel as a whole, but explains that a benefit of the panel is that it is lightweight. Therefore it would be obvious to minimize weight and thus arrive at a weight less than 500 kg/m3.
In reference to claim 10, Larkins teaches the same material (as claimed), thus it has the same properties.
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner has utilized USPTO approved search resources, such as EIC or external tools, beyond routine search tools and/or leveraged experts in the field. Examiner has cited and explained the relevance of prior art not used in rejections but pertinent to the claims or disclosure. Examiner has provided detailed search documentation through detailed Search Notes, such as annotated search results that identify which data sets were reviewed. When citing the prior art examiner has used annotations clearly in prior art rejections such as, using item-to-item matching to the prior art, pairing exact claim language to particular language used in the prior art, and/or clearly explaining examiner’s interpretation as to how a citation maps to claim language especially when there is not a one-to-one matching of terms.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
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