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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/18/25 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 68-69 and 74 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 68 recites “minimal amounts”. “Minimal” is subjective and as such it is indefinite.
Claim 74 recites, “… nylon, epoxy, any combination thereof, and recycled versions and/or recycled blends thereof”. Is the claim requiring both a polymeric material and recycled versions and/or blends thereof? It is unclear.
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.
Claims 50-53, 57, 61, 63-71 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patel et al., US 2002/0043035.
Regarding claims 50, 66 and 70:
Patel discloses a building surface panel comprising:
an outer element having a first front side, and a first rear side; and
a backing component having a second front side and a second rear side, wherein the second front side is fixedly attached to the first rear side of the outer element,
wherein the building surface panel further comprises at least one of:
a first thickness of the backing component being 0.5 to 5.0 times a second thickness of the outer element (they are approximately equal).
Regarding claim 51:
Patel discloses wherein the outer element and the backing component form a unitary body further comprising a folding feature that joins the outer element to the backing component.
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Regarding claims 52:
Patel discloses wherein the unitary body is folded along the folding feature to engage the outer element with the backing component to form the building surface panel.
Regarding claims 53, 61 and 63-64:
Patel discloses wherein the backing component comprises one or more longitudinally extending reinforcement elements, comprising a protrusion that protrudes from the second rear side, the protrusion comprising a longitudinally extending rib.
Regarding claim 57:
Patel discloses wherein the outer element forms a first unitary body, wherein the backing component forms a second unitary body with a groove at a bottom of the backing component, and wherein the outer element is attached to the backing component to form the building surface panel (they are molded together).
Regarding claims 65, 67, 71:
Patel discloses wherein the backing component comprises a longitudinally extending tongue (208) and PVC that may be formed of recycled material.
“Recycled” is directed to the manner by which the product was made. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process.
Regarding claims 68-69:
Patel does not mention impurities present in the PVC such that their content is implied to be trivial.
Claims 50, 57 and 62 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schaefer, US 2014/0260048.
Regarding claim 50:
Schaefer discloses a building surface panel comprising:
an outer element (10) having a first front side, and a first rear side; and
a backing component (20) having a second front side and a second rear side, wherein the second front side is fixedly attached to the first rear side of the outer element,
wherein the building surface panel further comprises at least one of:
a first thickness of the backing component being 0.5 to 5.0 times a second thickness of the outer element (refer to Fig. 2, clearly within this range).
Regarding claim 57:
Schaefer discloses wherein the outer element forms a first unitary body, wherein the back component forms a second unitary body with a groove (24) at a bottom of the backing component, and wherein the outer element is attached to the backing component to form the building surface panel.
Regarding claim 62:
Schaefer discloses wherein the outer element is wider than the backing component (para. 0009).
Claim 70 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cole et al., US 2015/0047281.
Regarding claim 70:
Cole discloses a building surface panel comprising:
an outer element (110) having a first front side, and a first rear side; and
a backing component (105) having a second front side and a second rear side, wherein the second front side is fixedly attached to the first rear side of the outer element,
wherein the building surface panel further comprises at least one of:
a first thickness of the backing component being 0.5 to 5.0 times a second thickness of the outer element (para. 0046).
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 50, 66, 70, 73 and 75 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz, US 4,327,528.
Regarding claims 50, 66 and 70:
Fritz discloses a building surface panel comprising:
an outer element (12) having a first front side, and a first rear side; and
a backing component (18 and 24) having a second front side and a second rear side, wherein the second front side is fixedly attached to the first rear side of the outer element.
Fritz appears to disclose but does not expressly disclose the relative thicknesses between the back component and the outer element.
It would have been an obvious matter of design choice to make a first thickness of the backing component being 0.5 to 5.0 times a second thickness of the outer element, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level or ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). There would be no unexpected or unpredictable result obtained from making the relative thicknesses within the range. There is no evidence that the claimed dimensions not specifically taught by Fritz provide a criticality that would be unachievable and unexpected with a reasonable amount of experimentation.
Regarding claims 73 and 75:
Fritz discloses wherein the backing component comprises first and second backing layers (18 and 24) having first and second element compositions respectively (foam and aluminum foil).
Claim 72 is rejected under 35 U.S.C. 103 as being unpatentable over Cole et al., US 2015/0047281.
Regarding claim 72:
Cole discloses wherein the panel has high wind resistance (para. 0045) but does not specify 62 pounds per square foot.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to design a structure to be compliant with applicable building codes and standards, since such a modification is directed to ordinary engineering practice to satisfy code requirements with predictable results.
Claims 76 and 78 are rejected under 35 U.S.C. 103 as being unpatentable over Fritz, US 4,327,528 as applied to claim 75, further in view of Stocksieker, US 5,636,490.
Regarding claim 76:
Fritz does not but Stocksieker discloses wherein the outer element comprises first and second element layers (27 and 29) having first and second element compositions respectively (plastic and metal).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to substitute the outer element structure of Stocksieker for that of Fritz in order to provide additional environmental protection.
Regarding claim 78:
Fritz discloses wherein the first backing composition is different from the second backing composition and Stocksieker discloses wherein the first element composition is different from the second element composition.
Allowable Subject Matter
Claim 74 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 77 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 74, the prior art discloses wherein the building surface panel has each of an outer element and a backing component formed of multiple layers. However, the prior art fails to disclose wherein each of the multiple layers comprise one of the specified polymeric materials. There is no teaching, suggestion or motivation to construct each of the multiple layers of the specified polymeric materials.
Regarding claim 77, the prior art of record discloses adhesive attachment within building surface panels between a first backing layer and a first element layer but does not specify a bond shear strength of at least 0.10 MPa at room temperature. Providing the specific bond shear strength to the adhesive attachment would require improper hindsight reconstruction based on the teachings of the prior art of record.
Conclusion
The 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 BRENT W HERRING whose telephone number is (571)270-3661. The examiner can normally be reached Monday-Thursday 7:30a-6:00p MT.
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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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/BRENT W HERRING/Primary Examiner, Art Unit 3633
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