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 § 103
2. 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 (i.e., changing from AIA to pre-AIA ) 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.
3. 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.
4. Claim(s) 1, 2, 7-9, 13-17, 21, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kastner (DE 2163165 A1) in view of Brueske (US 4,557,092).
Regarding claims 1 and 21, Kastner discloses an insulation system (Fig 6) capable of being adapted to be installed on a roof deck comprising:
a first insulation panel 1 (Page 5);
a second insulation panel 1 having a first side and an opposite second side;
a third insulation panel 1 (Fig 6);
a first material 4 contacting the first side of the second insulation panel 1, wherein the first material 4 connects the first insulation panel 1 to the second insulation panel 1 (Fig 6);
a second material 4 contacting the second side of the second insulation panel 1, wherein the second material 4 connects the second insulation panel 1 to the third insulation panel 1 (Fig 6);
wherein the insulation system is positionable between:
a folded configuration in which the first insulation panel, the second insulation panel, and the third insulation panel are stacked, and an unfolded configuration in which the first insulation panel, the second insulation panel, and the third insulation panel are unstacked (Fig 5, 6).
Kastner discloses the first material 4 and the second material 4 are an adhesive tape made from a combination of polyethylene terephthalate and polyethylene, but does not disclose the first material and the second material comprise a first double-sided tape and a second double-sided tape, wherein an adhesive of the first double-sided tape adheres the first insulation panel and the second insulation panel to the roof deck and an adhesive of the second double-sided tape adheres the second insulation panel and the third insulation panel to the roof deck. However, Brueske discloses an insulation system 10 secured to a roof deck 15 by a double sided tape, (Fig 1), (Col 2, Lines 53-62). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Kastner to have the first and second materials as a double sided tape as taught by Brueske, in order to secure the insulation panels to one another while allowing the insulation panels to be secured to the surface where it will be installed. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Kastner discloses the insulation system is used for the insulation of buildings, but does not disclose a roof deck and the insulation system installed on the roof deck. However, it would have been an obvious engineering design to have the insulation system installed on a roof deck in order to provide an insulated roofing system.
As modified, an adhesive of the first double-sided tape would adhere the first insulation panel and the second insulation panel to the roof deck and an adhesive of the second double-sided tape adheres the second insulation panel and the third insulation panel to the roof deck.
Regarding claim 2, Kastner discloses as discussed in claim 1, but does not disclose the roof deck is made of metal, concrete, or wood. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a roof deck as claimed, since 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 according to the required structural capabilities and properties of the roof.
Regarding claim 7, Kastner modified by Brueske discloses as discussed in claim 1, but does not disclose the first double-sided tape has a removable liner to expose the adhesive. However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the double sided tape with a removable liner in order to protect the adhesive prior to installation.
Regarding claim 8, Kastner discloses the second material 4 comprises a vapor retarder membrane that is a tape made from a combination of polyethylene terephthalate and polyethylene.
Regarding claim 9, Kastner discloses a length of at least one of the first insulation panel, the second insulation panel, or the third insulation panel is 3 feet (1 meter).and wherein a width of at least one of at least one of the first insulation panel, the second insulation panel, or the third insulation panel is 3 feet (1 meter), but does not disclose the length is 4 feet and the width is 8 feet. However, it would have been an obvious matter of design choice to modify the first, second and third insulation panels of Kastner to have the length and width as claimed, since such a modification would have involved a mere change in the size of the panels and would provide insulation systems of different sizes. A change in size is generally recognized as being within the level of ordinary skill in the art.
Regarding claim 13, Kastner discloses a first insulation panel, wherein the first insulation panel comprises: a first layer 2, a second layer 1, and a third layer 2, wherein the second layer 1 is between the first layer and the third layer, (Fig 6)
wherein the first insulation panel has a first edge, wherein the first edge is an edge of the first layer 2, wherein the first insulation panel has a thickness of 0.4 inches to 6 inches (3-6 cm), (Page 5);
a second insulation panel, wherein the second insulation panel comprises:
a fourth layer 2, a fifth layer 1, and a sixth layer 2, wherein the fifth layer 1 is between the fourth layer and the sixth layer, wherein the second insulation panel has a second edge and a third edge, wherein the second edge is an edge of the fourth layer 2, wherein the third edge is an edge of the sixth layer 2, wherein the second insulation panel has a thickness of 0.4 inches to 6 inches (3-6 cm), (Page 5);
a third insulation panel, wherein the third insulation panel comprises:
a seventh layer 2, an eighth layer 1, and a ninth layer 2, wherein the eighth layer 1 is between the seventh layer 2 and the ninth layer 2, wherein the third insulation panel has a fourth edge, wherein the fourth edge is an edge of the ninth layer, wherein the third insulation panel has a thickness of 0.4 inches to 6 inches (3-6 cm), (Page 5);
a first membrane 4, wherein the first membrane connects to and overlaps the first edge and the second edge; and a second membrane 4, wherein the second membrane connects to and overlaps the third edge and the fourth edge (Fig 6).
Kastner discloses the insulation system is used for the insulation of buildings, but does not disclose a roof deck, wherein the roof deck includes a first portion, a second portion, and a third portion. However, it would have been an obvious engineering design to have the insulation system installed on a roof deck in order to provide an insulated roofing system.
As modified, the roofing system would have the first insulation panel installed above the first portion of the roof deck, wherein the first layer is juxtaposed with the first portion, wherein the fourth layer is juxtaposed with the second portion, wherein the seventh layer is juxtaposed with the third portion, wherein the first membrane is juxtaposed with the roof deck.
Kastner discloses the first membrane 4 is an adhesive tape made from a combination of polyethylene terephthalate and polyethylene, but does not disclose the first membrane comprises a first double-sided tape, wherein an adhesive of the first double-sided tape adheres the first insulation panel and the second insulation panel to the roof deck. However, Brueske discloses an insulation system 10 secured to a roof deck 15 by a double sided tape, (Fig 1), (Col 2, Lines 53-62). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Kastner to include a double sided tape as taught by Brueske, in order to secure the insulation panels to one another while allowing the insulation panels to be secured to the surface where it will be installed. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
As modified, an adhesive of the first double-sided tape would adhere the first insulation panel and the second insulation panel to the roof deck.
Regarding claim 14, Kastner discloses as discussed in claim 13, but does not disclose the roof deck is made of metal, concrete, or wood. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have a roof deck as claimed, since 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 according to the required structural capabilities and properties of the roof.
Regarding claim 15, Kastner discloses a thickness of at least one of the first insulation panel, the second insulation panel, or the third insulation panel is 0.5 inches to 4.6 inches, (3-6 cm), (Page 5).
Regarding claim 16, Kastner discloses a length of at least one of the first insulation panel, the second insulation panel, or the third insulation panel is 3 feet (1 meter) and wherein a width of at least one of at least one of the first insulation panel, the second insulation panel, or the third insulation panel is 3 feet (1 meter), but does not disclose the length is 4 feet and the width is 8 feet. However, it would have been an obvious matter of design choice to modify the first, second and third insulation panels of Kastner to have the length and width as claimed, since such a modification would have involved a mere change in the size of the panels and would provide insulation systems of different sizes. A change in size is generally recognized as being within the level of ordinary skill in the art.
Regarding claim 17, Kastner discloses the second membrane 4 is an adhesive tape made from a combination of polyethylene terephthalate and polyethylene, but does not disclose the second membrane comprises a second double-sided tape, wherein an adhesive of the second double-sided tape adheres the second insulation panel and the third insulation panel to the roof deck. However, Brueske discloses an insulation system 10 secured to a roof deck 15 by a double sided tape, (Fig 1), (Col 2, Lines 53-62). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Kastner to include a double sided tape as taught by Brueske, in order to secure the insulation panels to one another while allowing the insulation panels to be secured to the surface where it will be installed. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
As modified, an adhesive of the second double-sided tape would adhere the second insulation panel and the third insulation panel to the roof deck.
Regarding claim 22, Kastner modified by Brueske discloses as discussed in claim 1, but does not disclose the second double-sided tape has a removable liner to expose the adhesive of the second double-sided tape. However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the double sided tape with a removable liner in order to protect the adhesive prior to installation.
5. Claim(s) 3-6, 10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kastner (DE 2163165 A1) in view of Brueske (US 4,557,092) and further in view of Banerjee (US 11,339,569).
Regarding claims 3 and 5, Kastner discloses the first and second insulation panels include a middle layer 1 of foam, but does not disclose the middle layer is polyisocyanurate foam. However, Banerjee discloses an insulation panel 100 including a middle layer 104 of polyisocyanurate foam, (Fig 1, 2), (col 5, Lines 14-24). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second insulation panels to have the middle layer of polyisocyanurate foam as taught by Banerjee, in order to provide an insulation panel with excellent fire resistance, dimensional stability, and moisture resistance. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Regarding claims 4 and 6, Kastner modified by Banerjee discloses as discussed in claims 3 and 5, Kastner discloses the first and second insulation panels have face layers 2 made of plastic film, but does not disclose the first insulation panel has face layers made of glass fiber-reinforced cellulosic felt and the second insulation panel has face layers made of a coated glass fiber mat. However, Banerjee further discloses the insulation panel 100 include face layer 102 and 106 formed of fiberglass (Col 4, Lines 66-67, Col 5, Lines 1-24). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second insulation panels to have the face layer of fiberglass as taught by Banerjee, in order to provide an insulation panel with increased strength and durability. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
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 fiberglass of the face layers being glass fiber-reinforced cellulosic felt and a coated glass fiber mat, since 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 according to the required properties of the insulation panel.
Regarding claim 10, Kastner discloses as discussed in claim 1, but does not disclose at least one of the first insulation panel, the second insulation panel and the third insulation panel comprises glass fiber-reinforced cellulosic felt. However, Banerjee discloses an insulation panel 100 formed of fiberglass (Col 4, Lines 66-67, Col 5, Lines 1-24). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify at least one of the first, second and third insulation panels to have fiberglass as taught by Banerjee, in order to provide an insulation panel with increased strength and durability. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
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 fiberglass being glass fiber-reinforced cellulosic felt, since 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 according to the required properties of the insulation panel.
Regarding claim 20, Kastner discloses the at least one of the second layer, the fifth layer, or the seventh layer include a layer 1 of foam, but does not disclose the at least one of the second layer, the fifth layer, or the seventh layer is polyisocyanurate foam. However, Banerjee discloses an insulation panel 100 including a layer 104 of polyisocyanurate foam, (Fig 1, 2), (col 5, Lines 14-24). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first, second and third insulation panels to have the at least one of the second layer, the fifth layer, or the seventh layer made of polyisocyanurate foam as taught by Banerjee, in order to provide an insulation panel with excellent fire resistance, dimensional stability, and moisture resistance. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
6. Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kastner (DE 2163165 A1) in view of Brueske (US 4,557,092) and further in view of Paradise (US 7,234,284). Kastner modified by Brueske discloses as discussed in claim 11, but does not disclose a third membrane covering at least a portion of the first insulation panel, the second insulation panel, and the third insulation panel, wherein the third membrane comprises a single-ply membrane of thermoplastic polyolefin (TPO). However, Paradise discloses a roofing system 10 comprising insulation panels 24 and a membrane 22 covering the insulation panels, wherein the membrane 22 comprises a single-ply membrane of thermoplastic polyolefin (Fig 1), (Col 3, Lines 29-37). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Kastner to include a third membrane as taught by Paradise, in order to provide a water proofing protection. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Response to Arguments
7. Applicant’s arguments with respect to claim(s) 1-10, 13-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Form 892.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADRIANA FIGUEROA whose telephone number is (571)272-8281. The examiner can normally be reached 8:30AM-5PM MONDAY-FRIDAY.
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/ADRIANA FIGUEROA/
Primary Examiner
Art Unit 3633
05/08/2026
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