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 § 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 1-3 and 8-10 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Moore et al., U.S. Pre Grant Publication 2017/0210098.
Regarding claims 1-2 and 8-9, Moore’s reference claim 1 discloses a fire resistant structural panel comprising a base layer with a first surface and a second surface; at least one fire resistant layer substantially coating the first or second surface or both; at least one water resistant layer substantially coating the one fire resistant layer. It is disclosed in paragraph 0011 that the fire resistant coating is integrally applied. Paragraph 0010 discloses a multi-layered panel wherein the multilayered panel comprises a wood structural panel such as an oriented strand board (OSB), coated or treated with a product that provides fire resistance. Also, paragraph 0010 discloses that the treatment may be integrated with the material forming the wood structural panel is also coated with a weather or water resistive barrier layer. Paragraph 0027 discloses that the fire resistant layer is applied to one side of the panel. Paragraph 0029 discloses that the water resistive layer can be applied to both sides of the panel. Figure 9 shows the production process wherein the fire resistant layer is applied first. It is disclosed in paragraphs 0011 and 0027 that the fire resistant treatment includes non-combustible magnesium oxide coating or a non-combustible fiberglass reinforced magnesium oxide coating. Figure 4 shows that the water resistive layer coats the first surface entirely. Paragraph 0040 discloses that the panel is cured. Paragraph 0039 of Moore discloses that The finished product is an OSB panel with integral fire resistive layers and one or more water resistive layers. Applicant’s claim 1 is directed to a product and the manner in which the coating is applied is given minimal patentable weight in a product claim. The manner in which the product is made does not make the product different from the prior art when the product of the prior art has the same components as claimed.
Regarding claims 2-3 and 9-10, the abstract of Moore discloses that base layer can include an OSB or plywood.
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 4-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al., U.S. Pre Grant Publication 2017/0210098 in view of Gutierrez et al., U.S. Pre Grant Publication 2021/0285216.
Moore, above, remains relied upon for claims 1 and 8.
Regarding claims 4-5 and 11, Moore is silent to the water resistant layer comprising a resin impregnated paper overlayer. Gutierrez discloses a multi-layered panel with a base layer comprising engineered or manufactured wood; a water resistant barrier layer (WRB) covering at least the outer face of the base layer. Paragraph 0027 of Gutierrez discloses that the wood may be an oriented strand board. Additionally, paragraph 0027 of Gutierrez discloses that the panel may be treated on one or both surfaces with a product that provides fire resistance. Also, paragraph 0027 discloses that the water resistive barrier layer (WRB) can include a paper overlay wherein the WRB may be coated with a polymer or adhesive [resin impregnated paper]. Moore and Gutierrez both disclose multi- layer panels having a base layer formed of an oriented strand board; a water resistive barrier layer coating on one side of the base layer. Moore and Gutierrez are analogous art. One of ordinary skill in the art before the effective filing date of the invention would utilize the resin impregnated paper of Gutierrez as the water resistive barrier layer in Moore for the benefit of enhanced water resistance.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-10 of U.S. Patent No. 12,188,230. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both the present application and the patented reference recite
A fire-resistant structural panel, comprising: a base layer with a first surface and a second surface; at least one water-resistant layer substantially coating the first surface, the at least one water-resistant layer comprising a resin-impregnated paper overlay; and at least one fire-resistant layer substantially coating the second surface, the at least one fire-resistant layer comprising non-combustible magnesium oxide, the magnesium oxide layer applied as a coating of slurry to substantially cover the second surface; wherein the base layer, the at least one fire-resistant layer, and the at least one water-resistant layer form are pre-formed and then cured into an integral panel as recited in present claims 1, 4-5, 7-8 and 11 and patented claims 1 and 8.
The claims in both the present application and the patented reference recite wherein the base layer comprises wood or engineered composite material as recited in present claims 2 and 9 and patented claim 2.
The claims in both the present application and the patented reference recite wherein the base layer comprises oriented-strand board, fiberboard, particleboard, or plywood as recited in present claims 3 and 10 and patented claims 3 and 9-10.
The claims in both the present application and the patented reference recite wherein further comprising a second fire-resistant layer substantially coating the at least one water-resistant layer as recited in present claim 6 and patented claim 4.
Regarding claim 12, the patented reference recites A fire-resistant structural panel, comprising: a base layer with a first surface and a second surface; at least one water-resistant layer substantially coating the first surface, the at least one water-resistant layer comprising a resin-impregnated paper overlay; and at least one fire-resistant layer substantially coating the second surface, the at least one fire-resistant layer comprising non-combustible magnesium oxide, the magnesium oxide layer applied as a coating of slurry to substantially cover the second surface. The “at least one” water-resistant layer can include a second water resistant layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
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