DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-20 are pending.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,258,761. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Re claim 1 of the pending application and claim 1 of ‘761, each discloses a roofing system comprising:
a roof deck;
a plurality of tapered insulation panels applied onto the roof deck, with each tapered insulation panel of the plurality of tapered insulation panels having an upper surface, a lower surface, a first side surface that extends from the upper surface to the lower surface, and a second side surface that is opposite to the first side surface and extends from the upper surface to the lower surface, wherein each tapered insulation panel of the plurality of tapered insulation panels comprises an individually formed, tapered foam panel that extends uniformly from (i) the upper surface to the lower surface and (ii) the first side surface to the second side surface;
at least one non-tapered insulation panel applied onto the upper surface of each tapered insulation panel of the plurality of tapered insulation panels, with the at least one non- tapered insulation panel having an upper surface and a lower surface, with the lower surface of the at least one non-tapered insulation panel being applied onto the upper surface of each tapered insulation panel of the plurality of tapered insulation panels, wherein the at least one non-tapered insulation panel comprises a non-tapered foam panel; and
a membrane layer applied onto the upper surface of the at least one non-tapered insulation panel, with the membrane layer having an upper surface and a lower surface, with the lower surface of the membrane layer being applied onto the upper surface of the at least one non-tapered insulation panel,
wherein the roofing system is applied in accordance with instructions for installation, such that (i) the plurality of tapered insulation panels are applied onto the roof deck, (ii) the at least one non-tapered insulation panel is applied onto the upper surface of each tapered insulation panel of the plurality of tapered insulation panels, and (iii) the membrane layer is applied onto the upper surface of the at least one non-tapered insulation panel, such that the upper surface of the membrane layer is exposed.
Re claim 2 of the pending application and claim 1 of ‘761, each discloses wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer.
Re claim 3 of the pending application and claim 1 of ‘761, each discloses wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel.
Re claim 4 of the pending application and claim 1 of ‘761, each discloses wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel.
Re claim 5 of the pending application and claim 2 of ‘761, each discloses further comprising a plurality of fasteners installed through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck.
Re claim 6 of the pending application and claim 3 of ‘761, each discloses further comprising a substrate applied onto the roof deck.
Re claim 7 of the pending application and claim 4 of ‘761, each discloses wherein the membrane layer has a thickness of 40 mils to 140 mils.
Re claim 8 of the pending application and claim 5 of ‘761, each discloses wherein one or more tapered insulation panels of the plurality of tapered insulation panels comprises (i) a different thickness, (ii) a different slope, or (iii) a combination of (i) and (ii).
Re claim 9 of the pending application and claim 6 of ‘761, each discloses wherein the at least one non-tapered insulation panel has a thickness of 0.5 inches to 4.5 inches.
Re claim 10 of the pending application and claim 7 of ‘761, each discloses wherein the roofing system comprises a low slope roof.
Re claim 11 of the pending application and claim 8 of ‘761, each discloses a roof assembly kit comprising:
a plurality of tapered insulation panels, wherein the plurality of tapered insulation panels is configured to be installed onto a roof deck of a low slope roof, with each tapered insulation panel of the plurality of tapered insulation panels having an upper surface, a lower surface, a first side surface that extends from the upper surface to the lower surface, and a second side surface that is opposite to the first side surface and extends from the upper surface to the lower surface, wherein each tapered insulation panel of the plurality of tapered insulation panels comprises an individually formed, tapered foam panel that extends uniformly from (i) the upper surface to the lower surface and (ii) the first side surface to the second side surface;
at least one non-tapered insulation panel having an upper surface and a lower surface, wherein the lower surface of the at least one non-tapered insulation panel is configured to be installed onto the upper surface of each tapered insulation panel of the plurality of tapered insulation panels, wherein the at least one non-tapered insulation panel comprises a non-tapered foam panel;
a membrane layer having an upper surface and a lower surface, wherein the membrane layer is configured to be installed onto the upper surface of the at least one non- tapered insulation panel; and
instructions for installation of (i) the plurality of tapered insulation panels on the roof deck, (ii) the at least one non-tapered insulation panel on the plurality of tapered insulation panels, and (iii) the membrane layer on the at least one non-tapered insulation panel, such that the upper surface of the membrane layer is exposed.
Re claim 12 of the pending application and claim 8 of ‘761, each discloses wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer.
Re claim 13 of the pending application and claim 8 of ‘761, each discloses wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel.
Re claim 14 of the pending application and claim 8 of ‘761, each discloses wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel.
Re claim 15 of the pending application and claim 9 of ‘761, each discloses further comprising a plurality of fasteners configured to be installed through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck.
Re claim 16 of the pending application and claim 10 of ‘761, each discloses a method comprising:
obtaining a plurality of tapered insulation panels, with each tapered insulation panel of the plurality of tapered insulation panels having an upper surface, and a lower surface, a first side surface that extends from the upper surface to the lower surface, and a second side surface that is opposite to the first side surface and extends from the upper surface to the lower surface, wherein each tapered insulation panel of the plurality of tapered insulation panels comprises an individually formed, tapered foam panel that extends uniformly from (i) the upper surface to the lower surface and (ii) the first side surface to the second side surface;
obtaining at least one non-tapered insulation panel having an upper surface and a lower surface, wherein the at least one non-tapered insulation panel comprises anon-tapered foam panel;
obtaining a membrane layer having an upper surface and a lower surface;
obtaining instructions for installation;
applying the plurality of tapered insulation panels onto a roof deck in accordance with the instructions for installation;
applying the at least one non-tapered insulation panel onto the plurality of tapered insulation panels, such that the lower surface of the at least one non-tapered insulation panel is applied onto the upper surface of each tapered insulation panel of the plurality of tapered insulation panels, in accordance with the instructions for installation; and
applying the membrane layer to the upper surface of the at least one non-tapered insulation panel, such that the upper surface of the membrane layer is exposed and the lower surface of the membrane layer is applied onto the upper surface of the at least one non-tapered insulation panel, in accordance with the instructions for installation.
Re claim 17 of the pending application and claim 10 of ‘761, each discloses wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer.
Re claim 18 of the pending application and claim 10 of ‘761, each discloses wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel.
Re claim 19 of the pending application and claim 10 of ‘761, each discloses wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel.
Re claim 20 of the pending application and claim 11 of ‘761, each discloses further comprising a plurality of fasteners configured to be installed through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck.
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) 10-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Re claim 10, claim 10 recites, “low slope roof” in line 2. The term, “low slope” is a relative term which renders the claim indefinite. The term “low-slope” 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. What is “low-slope” to one of ordinary skill may not be to another and thus, the scope of the claim is unclear. For the purposes of this examation, this language will be interpreted as any slope.
Re claim 11, claim 11 recites, “low slope roof” in line 3. The term, “low slope” is a relative term which renders the claim indefinite. The term “low-slope” 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. What is “low-slope” to one of ordinary skill may not be to another and thus, the scope of the claim is unclear. For the purposes of this examation, this language will be interpreted as any slope.
Claim(s) 12-15 is/are rejected as being dependent on a rejected claim.
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.
Claim(s) 1, 9-10 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Ochs (US 4,530,193).
Re claim 1, Ochs discloses a roofing system (Fig. 1-2) comprising:
a roof deck (16);
a plurality of tapered insulation panels (20; Col 2 lines 47-50) applied onto (Fig. 1-2) the roof deck (16), with each tapered insulation panel (20) of the plurality of tapered insulation panels (20) having an upper surface (upper surface of 20), a lower surface (lower surface of 20), a first side surface (one side surface of 20) that extends from the upper surface (upper surface of 20) to the lower surface (lower surface of 20), and a second side surface (another side surface of 20) that is opposite to the first side surface (one side surface of 20) and extends from the upper surface (upper surface of 20) to the lower surface (lower surface of 20), wherein each tapered insulation panel (20) of the plurality of tapered insulation panels (20) comprises an individually formed (Fig. 2), tapered foam panel (Fig. 2; Col 2 lines 47-50) that extends uniformly from (Fig. 2) (i) the upper surface (upper surface of 20) to the lower surface (lower surface of 20) and (ii) the first side surface (one side surface of 20) to the second side surface (another side surface of 20);
at least one non-tapered insulation panel (32; Col 3 line 14 disclosing polystyrene, a known insulating property material) applied onto (Fig. 2) the upper surface (upper surface of 20) of each tapered insulation panel (20) of the plurality of tapered insulation panels (20), with the at least one non- tapered insulation panel (32) having an upper surface (upper surface of 32) and a lower surface (lower surface of 32), with the lower surface (lower surface of 32) of the at least one non-tapered insulation panel (32) being applied onto (Fig. 1-2) the upper surface (upper surface of 20) of each tapered insulation panel (20) of the plurality of tapered insulation panels (20), wherein the at least one non-tapered insulation panel (32) comprises a non-tapered (Fig. 1-2) foam panel (Col 3 lines 11-15); and
a membrane layer (34) applied onto (Fig. 1-2) the upper surface (upper surface of 32) of the at least one non-tapered insulation panel (32), with the membrane layer (34) having an upper surface (upper surface of 34) and a lower surface (lower surface of 34), with the lower surface (lower surface of 34) of the membrane layer (34) being applied onto (Fig. 1-2) the upper surface (upper surface of 32) of the at least one non-tapered insulation panel (32),
wherein the roofing system (Fig. 1-2) is applied in accordance with instructions for installation (as this language is product by process), such that (i) the plurality of tapered insulation panels (20) are applied onto (Fig. 1-2) the roof deck (16), (ii) the at least one non-tapered insulation panel (32) is applied onto (Fig. 1-2) the upper surface (upper surface of 20) of each tapered insulation panel (20) of the plurality of tapered insulation panels (20), and (iii) the membrane layer (34) is applied onto (Fig. 1-2) the upper surface (upper surface of 32) of the at least one non-tapered insulation panel (32), such that the upper surface (upper surface of 34) of the membrane layer (34) is exposed (Fig. 1-2).
It should further be noted that the language “applied in accordance with instructions for installation” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 9, Ochs discloses the roofing system according to claim 1, wherein one or more tapered insulation panels (20) of the plurality of tapered insulation panels (20) comprises (i) a different thickness, (ii) a different slope (Col 4 lines 59-60), or (iii) a combination of (i) and (ii).
Re claim 10 in view of the rejection under 35 USC 112 above, Ochs discloses the roofing system according to claim 1, wherein the roofing system (Fig. 1-2) comprises a low slope roof (Fig. 2).
In the event the Examiner over broadly construed the term, “low-slope,” see alternative rejection below.
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.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193) in view of Johnson et al (“Johnson”) (US 2009/0104407).
Re claim 2, Ochs discloses the roofing system according to claim 1, but fails to disclose wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer.
However, Johnson discloses wherein the membrane layer (52) comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer ([0023]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer as disclosed by Johnson in order to provide a facing during manufacture and to provide waterproofing on the finished product ([0023]). In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 3, Ochs discloses the roofing system according to claim 1, but fails to disclose wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel.
However, Johnson discloses wherein each tapered insulation panel (Ochs: 20; Johnson: 42) of the plurality of tapered insulation panels (Ochs: 20; Johnson: 42) comprises a tapered (Ochs: 20) polyisocyanurate foam panel ([0019]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel as disclosed by Johnson in order to provide lower energy costs, prevent moisture damage, and resist vapor transmission, all very well-known benefits of the use of polyisocyanurate foam. In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 4, Ochs discloses the roofing system according to claim 1, but fails to disclose wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel.
However, Johnson discloses wherein the at least one non-tapered insulation panel (42) of the plurality of tapered insulation panels (42) comprises a non-tapered (Fig. 1) polyisocyanurate foam panel ([0019]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel as disclosed by Johnson in order to provide lower energy costs, prevent moisture damage, and resist vapor transmission, all very well-known benefits of the use of polyisocyanurate foam. In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193) in view of DE202019004335 (supplied in US App. No. 18/639,117).
Re claim 5, Ochs discloses the roofing system according to claim 1, but fails to disclose further comprising a plurality of fasteners installed through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck.
However, DE202019004335 discloses further comprising a plurality of fasteners (9) installed through the membrane layer (Ochs: 34; 9 of ‘335 extending through all layers), the at least one non-tapered insulation panel (5), and the plurality of tapered insulation panels (7a) into the roof deck (2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs further comprising a plurality of fasteners installed through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck as disclosed by DE202019004335 in order to provide additional securement such that the roofing system is less resistant to forces including wind uplift.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193) in view of Faulkner et al (“Faulkner”) (US 2003/0089445)
Re claim 6, Ochs discloses the roofing system according to claim 1, but fails to disclose further comprising a substrate applied onto the roof deck.
However, Faulkner discloses further comprising a substrate (20) applied onto the roof deck (52).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs further comprising a substrate applied onto the roof deck as disclosed by Faulkner in order to provide additional waterproofing ([0028]).
Claim(s) 7, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193).
Re claim 7, Ochs discloses the roofing system according to claim 1, but fails to disclose wherein the membrane layer has a thickness of 40 mils to 140 mils.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs wherein the membrane layer has a thickness of 40 mils to 140 mils in order to provide as little material as possible while still maintaining the benefits thereof. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 9, Ochs discloses the roofing system according to claim 1, but fails to disclose wherein the at least one non-tapered insulation panel has a thickness of 0.5 inches to 4.5 inches.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs wherein the at least one non-tapered insulation panel has a thickness of 0.5 inches to 4.5 inches in order to provide as little material as possible while still maintaining the benefits thereof. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 10 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193) in view of Johnson et al (“Johnson”) (US 2009/0104407).
Re claim 10 in the alternative, Ochs discloses the roofing system according to claim 1, but fails to disclose wherein the roofing system comprises a low slope roof.
However, Johnson discloses wherein the roofing system comprises a low slope roof ([0002]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Ochs wherein the roofing system comprises a low slope roof as disclosed by Johnson in order to provide cost-effective installation, maximize internal space and exterior space for equipment, and provide a safer, more walkable surface.
Claim(s) 11, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193) in view of Anderson et al (“Anderson”) (US 021/0222432).
Re claim 11 in view of the rejection under 35 USC 112 above, Ochs discloses a roof assembly (Fig. 1-2) comprising:
a plurality of tapered insulation panels (20; Col 2 lines 47-50), wherein the plurality of tapered insulation panels (20) is configured to be installed onto a roof deck (16) of a low slope (Fig. 2; in addition, this is a statement of intended use, and 20 is capable of installation thereon), with each tapered insulation panel (20) of the plurality of tapered insulation panels (20) having an upper surface (upper surface of 20), a lower surface (lower surface of 20), a first side surface (one side surface of 20) that extends from the upper surface (upper surface of 20) to the lower surface (lower surface of 20), and a second side surface (another side surface of 20) that is opposite to the first side surface (one side surface of 20) and extends from the upper surface (upper surface of 20) to the lower surface (lower surface of 20), wherein each tapered insulation panel (20) of the plurality of tapered insulation panels (20) comprises an individually formed (Fig. 2), tapered foam panel (Fig. 2; Col 2 lines 47-50) that extends uniformly from (Fig. 2) (i) the upper surface (upper surface of 20) to the lower surface (lower surface of 20) and (ii) the first side surface (one side surface of 20) to the second side surface (another side surface of 20);
at least one non-tapered insulation panel (32; Col 3 line 14 disclosing polystyrene, a known insulating property material) having an upper surface (upper surface of 32) and a lower surface (lower surface of 32), wherein the lower surface (lower surface of 32) of the at least one non-tapered insulation panel (32) is configured to be installed (Fig. 1-2) onto the upper surface (upper surface of 20) of each tapered insulation panel (20) of the plurality of tapered insulation panels (20), wherein the at least one non-tapered insulation panel (32) comprises a non-tapered (Fig. 1-2) foam panel (Col 3 lines 11-15); and
a membrane layer (34) having an upper surface (upper surface of 34) and a lower surface (lower surface of 34), wherein the membrane layer (34) is configured to be installed (Fig. 1-2) onto (Fig. 1-2) the upper surface (upper surface of 32) of the at least one non-tapered insulation panel (32),
wherein the roofing system (Fig. 1-2) is applied such that (i) the plurality of tapered insulation panels (20) are applied onto (Fig. 1-2) the roof deck (16), (ii) the at least one non-tapered insulation panel (32) is applied onto (Fig. 1-2) the upper surface (upper surface of 20) of each tapered insulation panel (20) of the plurality of tapered insulation panels (20), and (iii) the membrane layer (34) is applied onto (Fig. 1-2) the upper surface (upper surface of 32) of the at least one non-tapered insulation panel (32), such that the upper surface (upper surface of 34) of the membrane layer (34) is exposed (Fig. 1-2),
but fails to disclose a kit, an instructions for installation.
However, Anderson discloses a kit ([0015]-[0016]), an instructions for installation ([0015]-[0016]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof assembly of Ochs with a kit, an instructions for installation as disclosed by Anderson in order to make smaller pre-assembly for shipping and transportation, and to simplify assembly by explaining how to assemble.
It should further be noted that the language “applied in accordance with instructions for installation” is considered product-by-process; therefore, determination of patentability is based on the product itself. See M.P.E.P. §2113. The patentability of the product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the same prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).
Re claim 16, Ochs discloses a method (Fig. 1-2) comprising:
obtaining (Fig. 1-2 showing 20 obtained) a plurality of tapered insulation panels (20; Col 2 lines 47-50), with each tapered insulation panel (20) of the plurality of tapered insulation panels (20) having an upper surface (upper surface of 20), a lower surface (lower surface of 20), a first side surface (one side surface of 20) that extends from the upper surface (upper surface of 20) to the lower surface (lower surface of 20), and a second side surface (another side surface of 20) that is opposite to the first side surface (one side surface of 20) and extends from the upper surface (upper surface of 20) to the lower surface (lower surface of 20), wherein each tapered insulation panel (20) of the plurality of tapered insulation panels (20) comprises an individually formed (Fig. 2), tapered foam panel (Fig. 2; Col 2 lines 47-50) that extends uniformly from (Fig. 2) (i) the upper surface (upper surface of 20) to the lower surface (lower surface of 20) and (ii) the first side surface (one side surface of 20) to the second side surface (another side surface of 20);
obtaining (Fig. 1-2 showing 32 obtained) at least one non-tapered insulation panel (32; Col 3 line 14 disclosing polystyrene, a known insulating property material) having an upper surface (upper surface of 32) and a lower surface (lower surface of 32), wherein the lower surface, wherein the at least one non-tapered insulation panel (32) comprises a non-tapered (Fig. 1-2) foam panel (Col 3 lines 11-15); and
obtaining (Fig. 1-2 showing 34 obtained) a membrane layer (34) having an upper surface (upper surface of 34) and a lower surface (lower surface of 34);
applying (Fig. 1-2 showing 20 applied) the plurality of tapered insulation panels (20) onto a roof deck (16) in accordance with the instructions for installation (as modified below);
applying (Fig .1-2 showing 32 applied) the at least one non-tapered insulation panel (32) onto the plurality of tapered insulation panels (20), such that the lower surface (lower surface of 32) of the at least one non-tapered insulation panel (32) is applied onto (Fig. 1-2) the upper surface (upper surface of 20) of each tapered insulation panel (20) of the plurality of tapered insulation panels (20), in accordance with the instructions for installation (as modified below); and
applying (Fig. 1-2 showing 34 applied) the membrane layer (34) to the upper surface (upper surface of 32) of the at least one non-tapered insulation panel (32), such that the upper surface (upper surface of 34) of the membrane layer (34) is exposed (Fig. 1-2) and the lower surface (lower surface of 34) of the membrane layer (34) is applied onto the upper surface (upper surface of 32) of the at least one non-tapered insulation panel (32), in accordance with the instructions for installation (as modified below),
but fails to disclose obtaining instructions for installation.
However, Anderson discloses obtaining instructions for installation ([0015]-[0016]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Ochs with obtaining instructions for installation as disclosed by Anderson in order to simplify assembly by explaining how to assemble.
Claim(s) 12-14, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193) in view of Anderson et al (“Anderson”) (US 021/0222432) and Johnson et al (“Johnson”) (US 2009/0104407).
Re claim 12, Ochs as modified discloses the roof assembly kit according to claim 11, but fails to disclose wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer.
However, Johnson discloses wherein the membrane layer (52) comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer ([0023]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof assembly kit of Ochs wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer as disclosed by Johnson in order to provide a facing during manufacture and to provide waterproofing on the finished product ([0023]). In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 13, Ochs as modified discloses the roof assembly kit according to claim 11, but fails to disclose wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel.
However, Johnson discloses wherein each tapered insulation panel (Ochs: 20; Johnson: 42) of the plurality of tapered insulation panels (Ochs: 20; Johnson: 42) comprises a tapered (Ochs: 20) polyisocyanurate foam panel ([0019]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof assembly kit of Ochs wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel as disclosed by Johnson in order to provide lower energy costs, prevent moisture damage, and resist vapor transmission, all very well-known benefits of the use of polyisocyanurate foam. In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 14, Ochs discloses the roof assembly kit according to claim 11, but fails to disclose wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel.
However, Johnson discloses wherein the at least one non-tapered insulation panel (42) of the plurality of tapered insulation panels (42) comprises a non-tapered (Fig. 1) polyisocyanurate foam panel ([0019]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof assembly kit of Ochs wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel as disclosed by Johnson in order to provide lower energy costs, prevent moisture damage, and resist vapor transmission, all very well-known benefits of the use of polyisocyanurate foam. In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 17, Ochs as modified discloses the method according to claim 16, but fails to disclose wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer.
However, Johnson discloses wherein the membrane layer (52) comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer ([0023]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Ochs wherein the membrane layer comprises at least one of (i) a single-ply TPO membrane, (ii) a single-ply PVC membrane, (iii) an ethylene propylene diene terpolymer membrane (EPDM), (iv) a modified bitumen roofing layer, or (v) a built-up roofing (BUR) layer as disclosed by Johnson in order to provide a facing during manufacture and to provide waterproofing on the finished product ([0023]). In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 18, Ochs as modified discloses the method according to claim 16, but fails to disclose wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel.
However, Johnson discloses wherein each tapered insulation panel (Ochs: 20; Johnson: 42) of the plurality of tapered insulation panels (Ochs: 20; Johnson: 42) comprises a tapered (Ochs: 20) polyisocyanurate foam panel ([0019]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Ochs wherein each tapered insulation panel of the plurality of tapered insulation panels comprises a tapered polyisocyanurate foam panel as disclosed by Johnson in order to provide lower energy costs, prevent moisture damage, and resist vapor transmission, all very well-known benefits of the use of polyisocyanurate foam. In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 19, Ochs discloses the method according to claim 16, but fails to disclose wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel.
However, Johnson discloses wherein the at least one non-tapered insulation panel (42) of the plurality of tapered insulation panels (42) comprises a non-tapered (Fig. 1) polyisocyanurate foam panel ([0019]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Ochs wherein the at least one non-tapered insulation panel comprises a non-tapered polyisocyanurate foam panel as disclosed by Johnson in order to provide lower energy costs, prevent moisture damage, and resist vapor transmission, all very well-known benefits of the use of polyisocyanurate foam. In addition, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 15 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ochs (US 4,530,193) in view of Anderson et al (“Anderson”) (US 021/0222432) and DE202019004335 (supplied in US App. No. 18/639,117).
Re claim 15, Ochs discloses the roof assembly kit according to claim 11, but fails to disclose further comprising a plurality of fasteners installed through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck.
However, DE202019004335 discloses further comprising a plurality of fasteners (9) installed through the membrane layer (Ochs: 34; 9 of ‘335 extending through all layers), the at least one non-tapered insulation panel (5), and the plurality of tapered insulation panels (7a) into the roof deck (2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof assembly kit of Ochs further comprising a plurality of fasteners installed through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck as disclosed by DE202019004335 in order to provide additional securement such that the roofing system is less resistant to forces including wind uplift.
Re claim 20, Ochs discloses the method according to claim 16, but fails to disclose further comprising installing a plurality of fasteners through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck.
However, DE202019004335 discloses further comprising installing (Fig. 1 showing 9 installed) a plurality of fasteners (9) through the membrane layer (Ochs: 34; 9 of ‘335 extending through all layers), the at least one non-tapered insulation panel (5), and the plurality of tapered insulation panels (7a) into the roof deck (2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Ochs further comprising installing a plurality of fasteners through the membrane layer, the at least one non-tapered insulation panel, and the plurality of tapered insulation panels into the roof deck as disclosed by DE202019004335 in order to provide additional securement such that the roofing system is less resistant to forces including wind uplift.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
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