DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The double patenting rejection of the previous office action is obviated by the Applicant’s terminal disclaimer dated 7/23/25.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 40 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification does not include the new limitations of no element extending through the insulation layer, as fig. 9 shows a fastener passing through 130 and 120.
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 16-29 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 16 recites the magnesium oxide layer along an entirety of the second side of the insulation layer. However, fig. 9 discloses a fastener interrupting the continuity of contact between layers and there appears to be no suggestion of such a limitation in the specification. Claims 17-29 are rejected for depending from claim 16.
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) 16-19, 21-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,240,691 to Holzkaemper et al in view of U.S. Patent Publication No. US 2009/0011207 to Dubey as in the previous action.
Regarding claims 16 and 40, as best understood, Holzkaemper discloses a wall panel with a rigid layer (fig. 1: 3,) being cementitious and having glass fibers (column 4, lines 24-29) and having a first and second side, and a foam insulation (fig. 1: 2, column 4, lines 12-19) layer attached to and contiguous with the second side (back) of the rigid layer. However, the rigid layer of Holzkaemper is not disclosed as having magnesium oxide. Dubey discloses a cementitious material with magnesium oxide [0063]. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Holzkaemper by adding such a material in order to increase strength. Regarding the limitation of being configured for installation on a fixed structural building component, the wall panel of Holzkaemper may function in such a manner as it is attachable to a fixed structure. Also, regarding the limitation of the fibers configured to be the principal load carrying member, this is also possible as the fibers carry a load and without the fibers, the strength becomes diminished.
Regarding claims 17, 18, 27, 28 and 32, a veneer layer (fig. 1: 5, brick) is attached to the first side of the rigid layer and may inherently function as a water-resistant barrier. It should be noted that water may not pass through brick, making them water resisting.
Regarding claim 19, the rigid layer is poured (column 4, lines 65-67).
Regarding claim 21, the insulation of Holzkaemper is polyurethane foam (2, column 4, lines 1-6). Regarding the order of steps, the Applicant should note that the claims are drawn to the final product wall panel and not the method of making.
Regarding claims 29 and 38, the adhesive property of the rigid layer secures the rigid layer to the veneer (column 6, lines 1-20).
Regarding claims 22-24, Holzkaemper discloses the basic claim structure of the instant application but does not disclose specific dimensions of class. Applicant fails to show criticality for specifically claimed dimensions of class, therefore it would have been an obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Holzkaemper by using such a material as an obvious design choice where more or less insulation is required based upon the environment for which it is intended to function. Regarding the limitation of “poured”, this is a method step regarding the means of production. The Applicant should note that the claims are drawn to the final product, the final wall panel, and not the method
Regarding claim 25, the veneer layer has ridges (areas between bricks which form channels.
Regarding claims 26, 30, 31, 33, 34, 35 and 37, attachment to a building is disclosed (claim 1, Holzkaemper). Regarding the use of a plurality of panels, this is not explicitly disclosed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use multiple panels, since it has been held that a mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. V. Bemis Co., 193 USPQ 8. The use of a plurality of panels would be useful on large buildings and allow for easy transport of the panels if there are a plurality as opposed to a single large panel. Regarding the limitation of a sealant between seams of panels, the examiner takes official notice that sealant such as caulking or other adhesives are well known in the art to join exterior components in order to add water resistance. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add sealant between seams to prevent moisture entering the structure. Regarding the order of steps, the Applicant should note that the claims are drawn to the final product wall panel and not the method of making.
Regarding claim 36, securing the panel to a building structure is disclosed (Holzkaemper claim 1) but the specific means of attachment is not disclosed. The Examiner takes official notice that screws are well known in the art of construction and are commonly used to secure panels together, such as sheetrock as an example, and countersinking the screws is needed to set them flush. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify use screws in order to better secure the panel to a structure in a secure and economical manner.
Claim 39, as best understood, is rejected for reasons cited in the rejections of claims 16-18.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,240,691 to Holzkaemper et al in view of U.S. Patent Publication No. US 2009/0011207 to Dubey further in view of U.S. Patent No. 7,641,812 to Alderman as in the previous action.
Regarding claim 20, Holzkaemper, in view of Dubey do not disclose the use of a phase change material. Alderman discloses such a material (fig. 1A, claim 1). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Holzkaemper to use such a material in the insulation to better increase the insulative properties.
Response to Arguments
Applicant's arguments filed 8/25/26 have been fully considered but they are not persuasive. The Applicant argues the Examiners rational for combining references, regarding claim 16, in that the magnesium oxide is not intended to be load bearing on its own. This is not convincing since the references are related in the art of construction and there is no teaching in any reference that teaches away from a combination. Regarding the load bearing properties, the Applicant should note that this limitation is functional and is a desired result. The claim simply adds magnesium oxide with no structure that would cause such a function. The Applicant argues the combination would render Holzkaemper ineffective as MgO would render the invention ineffective. However, this is not convincing as Dubey discloses a material including MgO and cement, as in the rejection above.
The Applicant argues the Examiner has used hindsight to combine Holzkaemper with Dubey. However, as stated in the rejection above, Dubey discloses the use of a cementitious material with MgO and since this is already taught, there is no hindsight.
The Applicant argues the references teach away from each other because Halzkaemper already teaches a material for strength, fiberglass and gypsum. However, the mere addition or substitution of an already known material does not teach away. Increasing the strength of a structure is not considered as teaching away.
Regarding new claim 40, this is addressed in the action above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Basil Katcheves whose telephone number is (571)272-6846. The examiner can normally be reached Monday-Thursday, 8:00 am to 6:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached on (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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/BASIL S KATCHEVES/Primary Examiner, Art Unit 3633
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