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 .
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 1-16 - are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 1-15 of U.S. Patent No. 12,123,200. For double patenting to exist as between the rejected claims and patent claims, it must be determined that the rejected claims are not patentably distinct from the patent claims. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims and, if so, whether those differences render the claims patentably distinct.
Claims 1-16 recite a product. It is clear that all the elements of the application claims are to be found in the patent claims. The difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus more specific. Thus the invention of the patent claims is in effect a "species" of the "generic" invention of the application claims. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, the application claims are not patentably distinct from the patent claims.
Claims 17-20 are rejected under the judicially created doctrine of obviousness-type double patenting as unpatentable over claims 16-17 of U.S. Patent No. 12,123,200. For double patenting to exist as between claims 17-20 and patent claims 16-17, it must be determined that the rejected claim is not patentably distinct from the patent claim. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims and, if so, whether those differences render the claims patentably distinct.
Claims 17-20 recite certain basis weight ranges. The patent claims do not recite exactly the same ranges. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the claimed basis weight ranges for strength.
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 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.
Claims 1-4 and 12-20- are rejected under 35 U.S.C. 103 as being unpatentable over Griem (2014/0102615) in view of Warwick (3,616,120) and Pilz (8,087,205).
A wood-based product, comprising:
a substrate (46,48,50) of engineered wood (OSB, fig. 2) with a front face (the face exposed in Fig. 2), back face, top edge, bottom edge, right edge, and left edge;
a fines layer positioned on the front face of the substrate (“in an alternative embodiment, both the top 50 and bottom 46 layers are covered by a surface layer (not illustrated), composed substantially of wood particle fines”, para. 116), said fines layer comprising wood particles (“The particle separator 14 is designed to classify and separate the wood particles into three fractions; fines 21…”, para. 97) and one or more fire-resistant additives absorbed by said wood particles (the fire retardant is impregnated in the wood fines as described at para. 102, “the fines 21 and strands 23 of wood are immersed in a watery solution of a flame-retardant chemical composition 12, wherein the fines 21 and the strands 23 of wood are soaked…stirring causes the strands 23 to be separated from each other thereby exposing substantially all their surfaces to the watery solution of a fire-retardant composition 12, which again leads to a very efficient and time saving impregnation”). The Griem wood particles fines layer is not expressly disclosed as comprising a lignocellulosic wood particles fines layer. Although, the examiner would like to point out that it is wood, and according to the common definition of lignocellulose, lignocellulose is a complex of lignin and cellulose present in the cell walls of woody plants. Thus, since Griem’s material is wood, i.e. a woody plant, then the examiner contends it is a lignocellulosic material. However, if the applicant disagrees, Warwick teaches a wood particles fines layer comprises a lignocellulosic wood particles fines layer (abstract and col. 1, lines 3, 19, and 26-37). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Griem wood particles fines layer to comprise a lignocellulosic wood particles fines layer as taught by Warwick for a combination of cost savings and strength. Finally, Griem teaches the fines layer wood particles integrated with one or more fire-resistant additives absorbed by the wood particles (the fire retardant is impregnated in the wood fines as described at para. 102, “the fines 21 and strands 23 of wood are immersed in a watery solution of a flame-retardant chemical composition 12, wherein the fines 21 and the strands 23 of wood are soaked…stirring causes the strands 23 to be separated from each other thereby exposing substantially all their surfaces to the watery solution of a fire-retardant composition 12, which again leads to a very efficient and time saving impregnation”).
Griem does not teach at least one embedded or inset strip of intumescent fire-resistant material, inset or embedded in the back face of the substrate, proximate the top edge or bottom edge, and extending the length of the piece of siding parallel to the top edge or bottom edge. Pilz, Fig. 4, teaches a body (a stud-like member) with at least one inset strip of intumescent fire resistant material 40, inset in a back face (the back face of the stud that faces the substrate), proximate a top edge (the adjacent edge), and extending the length of the stud parallel to the top edge. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for Griem to have at least one inset strip of intumescent fire resistant material, inset in the back face, proximate the top edge for a wall assembly that “seals itself when heat or fire is present”, col. 2, lines 1-3.
2. Griem in view of Warwick and Pilz teaches the product of claim 1, Griem further teaching the substrate is multi-layered (46,48,50). In any case, Applicant admits a multi-layered substrate is old in the art, page 1.
3. Griem in view of Warwick and Pilz teaches the product of claim 2, Griem further teaching the substrate comprises oriented strand board (OSB), with a bottom 46 layer, a core 48 layer, and a top 50 layer.
4. Griem in view of Warwick and Pilz teaches the product of claim 2, Griem further teaching the fines layer is bonded with the substrate, para. 105.
12. Griem in view of Warwick and Pilz teaches the product of claim 2, Griem in view of Warwick and Pilz further teaching the at least one strip of intumescent fire-resistant material comprises a first strip on the back face proximate the bottom edge, said first strip extending the length of the piece of siding parallel to the bottom edge, wherein said intumescent fire-resistant material expands when exposed to heat or flame because the Pilz strip is at the edge, said first strip extending the length of the piece of siding parallel to the bottom edge.
13. Griem in view of Warwick and Pilz teaches the product of claim 12, Griem in view of Warwick and Pilz further teaching a second strip of intumescent fire-resistant material embedded in the back face between the spline and the top edge, proximate to the spline because Pilz, Fig. 4, teaches another strip 42 on the opposite side, with spline-like structure 38 therebetween (strips on either side of the spline of the product of the combination serve the same purpose of fire-protecting a gap between a substrate and attached element).
14. Griem in view of Warwick and Pilz teaches the product of claim 1, Grim in view of Warwick further teaching the lignocellulosic wood particles are pre-treated with said one or more fire-resistant additives and the fire-resistant additives provide one or more of resistance to flame spread (“flame retardant”, Griem at para. 3), resistance to ignition, and resistance to combustion because Grim teaches impregnating the additives in the wood particles and Grim in view of Warwick substitutes those wood particles for lignocellulosic wood particles. Examiner notes that the “pre-treated” limitation is a product by process limitation, and Griem in view of Warwick need only teach the final product, lignocellulosic wood particles treated with said one or more fire-resistant additives.
15. Griem in view of Warwick and Pilz teaches the product of claim 1, Griem further teaching the product comprises a piece of siding (the product is capable of being used as wall siding).
16. Griem in view of Warwick and Pilz teaches the product of claim 1, Griem further teaching the fines layer constitutes the face (top) layer of the product, and said one or more fire-resistant additives are thoroughly and consistently applied (mixed in a mixer) throughout the face layer, and are configured to provide enhanced integrated fire protection and resistance.
17-20 Griem in view of Warwick and Pilz does not expressly teach the fines layer basis weight is approximately 350 pounds per thousand square feet. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the fines layer basis weight to be approximately 350 pounds per thousand square feet for optimal density and outer layer strength.
Claims 5-6 - are rejected under 35 U.S.C. 103 as being unpatentable over Griem in view of Warwick and Pilz and in further view of Watson (7,222,465).
5-6. Griem does not teach a spline extending from the back face of the substrate, wherein the spline extends downward at an acute angle from the back face, proximate the bottom edge, and extending for at least a portion of the length of the piece of siding parallel to the bottom edge. Watson, Fig. 1, teaches a spline 34 extending downward at an acute angle from the back face, proximate a bottom edge, and extending for at least a portion of the length of the piece of siding parallel to the bottom edge. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the Griem board into a splined siding board for neatly spaced, fire resistant, and inexpensive (OSB is relatively inexpensive) siding.
Claim 7 – is rejected under 35 U.S.C. 103 as being unpatentable over Griem in view of Warwick and Pilz and in further view of Cartlidge (3,873,662).
7. Griem does not expressly teach the fire-resistant additive comprises sodium borate. Cartlidge teaches a fire-resistant additive comprises sodium borate (claim 5). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Griem fire resistant additive to comprise sodium borate for enhanced fire resistance.
Claim 8 – is rejected under 35 U.S.C. 103 as being unpatentable over Griem in view of Warwick and Pilz and in further view of Clark (2010/0151229).
8. Griem does not expressly teach the product comprises pMDI adhesive resin. Clark teaches a product comprises pMDI adhesive resin (“Commercial preparations of the isocyanate resin material may contain…poly (methylene diphenyl diisocyanate) otherwise known as polymeric MDI (or PMDI)”, para. 48). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the product to comprise pMDI adhesive resin for strength.
Claim 9 – is rejected under 35 U.S.C. 103 as being unpatentable over Griem in view of Warwick and Pilz and in further view of Wiker (6,443,257).
9. Griem does not teach the fines layer pre-assembled into a mat or laminate. Wiker teaches that it is old in the art for a fines layer (paperboard layer) to be pre-assembled into a mat or laminate. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a fire-retardant paperboard laminate for enhanced fire protection. Examiner notes that the “pre-assembled” is a product by process limitation, and Griem in view of Warwick and in further view of Wiker need only teach the final product.
Claims 10-11 – are rejected under 35 U.S.C. 103 as being unpatentable over Griem in view of Warwick and Pilz and in further view of Banergee (2018/0298609).
10. Griem does not expressly teach a resin-impregnated overlay applied to the fines layer, wherein the overlay comprises a fire-resistant primer or coating. Banergee teaches a resin-impregnated overlay (102) applied to an outer layer, wherein the overlay comprises a fire-resistant coating. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add such layer to Griem for extra fire resistance. Examiner notes that the “factory-applied” limitation is a product by process limitation, and Cartlidge need only teach the final product, a coated layer.
11. Griem does not expressly teach a fire-resistant coating cover one or more of the top edge, bottom edge, right edge, and left edge of the substrate. Banergee teaches a fire-resistant coating (resin-impregnated overlay (102)). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add such layer to Griem for extra fire resistance. The coating is not expressly taught as covering one or more of the top edge, bottom edge, right edge, and left edge of the substrate. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to so cover the substrate for maximum fire resistance.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
As to the argument that the Pilz intumescent “does not contact the wood stud”, this is correct, as the Pilz intumescent contacts bottom or floor element 18.
As to the argument that “the present invention has the intumescent material in direct contact embedded in the wood…In contrast, the spline of the present invention does not contact the wall, nor does it match the angle of the top of the board (i.e., it does not form a complementary fit or interlock)”, Pilz has the intumescent material in direct contact essentially embedded in the material of “component 32”.
As to the argument that “Watson does not teach a spline”, Watson teaches a spline as broadly recited, as a spline is “a long narrow strip of wood, metal, etc”, collins.com, Watson fig. 1 showing such structure.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (“the spline of the present invention does not contact the wall, nor does it match the angle of the top of the board (i.e., it does not form a complementary fit or interlock)”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Examiner indicates that the motivation for the combination is “for neatly spaced, fire resistant, and inexpensive (OSB is relatively inexpensive) siding”.
In response to applicant's argument that Cartlidge is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Cartlidge is reasonably pertinent to the fire resistance problem with which the inventor is concerned.
In response to applicant's argument that “Cartlidge makes clear that the FR chemicals are in particle form, and are not absorbed by the furnish particles” and “In the present invention, in contrast, the FR treatment and the fines particles exist in the product in an integrated state, because the fines particles have absorbed the FR treatment”, while the Cartlidge FR chemicals may or may not be absorbed by the furnish particles, at least Griem teaches wood-impregnated fire-retardant, para. 102.
In response to applicant's argument that “Cartlidge teaches away from mixing fire-retardant chemicals with the outermost, face layer of fine furnish particles, for, among other reasons, minimizing loss of fire retardant chemical during final sanding. Col. 1: 17-20. Cartlidge makes clear that the dry fire retardant chemical is incorporated into the layer immediately inside and merging with the outer course, Cartlidge is used for the sole purpose of showing it is old in the art to use sodium borate as a fire-retardant in wood. Where Cartlidge may or may not suggest the use of the sodium borate is not teaching away from using it, especially due to its high fire resistance.
In response to applicant's argument that Cartlidge is nonanalogous art because it “does not disclose a “piece of siding””, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Cartlidge is reasonably pertinent to the particular problem with which the inventor is concerned, namely, fire resistance in wood.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J KENNY whose telephone number is (571)272-9951. The examiner can normally be reached Monday-Friday 8am-5pm.
THIS ACTION IS MADE FINAL. 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.
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, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL J KENNY/Examiner, Art Unit 3633
/BRIAN E GLESSNER/Supervisory Patent Examiner, Art Unit 3633
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