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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-15, in the reply filed on March 25, 2026 is acknowledged.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 25, 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/29/2025 has been considered by the examiner.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. However, the present application does not comply with one or more conditions for receiving the benefit of an earlier filing date.
For a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional application. If a claim in the nonprovisional application is not adequately supported by the written description and drawing(s) (if any) of the provisional application, that claim in the nonprovisional application is not entitled to the benefit of the filing date of the provisional application. See MPEP 211.05(I)(A).
The disclosure of the prior-filed application, Application No. 63/656,734, fails to provide adequate support for one or more claims of the present application. Specifically, claims 2, 3, 5, 6, 9, 10, and 12-15 do not receive the benefit of the earlier priority date of 06/06/2024 because the provisional application (63/656,734) does not disclose the subject matter recited in these claims.
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 2, 3, 8-11, and 13-15 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.
Regarding claims 2, 3, and 14, the limitations reciting “wherein the embossed facer results from embossing of a previously un-embossed facer whereby the embossing of the un-embossed facer results in an increased surface area of the embossed facer relative to the un-embossed face and wherein the increased surface area is in a range of between 1.00% and 22.70% of the surface area of the un-embossed facer” (claim 2) and “wherein the embossed facer results from embossing of a previously un-embossed facer whereby the embossing of the un-embossed facer results in a thickness profile displacement of the embossed facer relative to the un-embossed face and wherein the thickness profile displacement is in a range of between 0.0009 inches and 0.0034 inches” (claims 3 and 14) are indefinite because it is not clear exactly what structure is required by the claims.
Independent claims 1 and 12 set forth that the building sheathing comprises a foam core and an embossed facer adhered to the foam core, wherein the embossed facer comprises non-planar surface features, and wherein a primary drainage pattern comprising a plurality of primary drainage channels extends into the embossed facer and the foam core. In the context of the final building sheathing product as recited in the claims, the embossed facer is understood to have undergone two separate “embossment” steps: (1) a micro-embossing step in which the non-planar surface features are formed (see, e.g., [00050] and Fig. 2C of the as-filed specification), and (2) an imprinting step in which the primary drainage channels are formed (see, e.g., [00061] and Fig. 1).
However, the current language of claims 2, 3, and 14 appears to be directed to an intermediate form of the embossed facer, in which only the first “micro-embossing” step has been performed, but in which the second “imprinting” step has not yet been performed. See, e.g., paragraph [00050], in which the embossing of the un-embossed facer (110) is said to result in a thickness or profile dimensional modification of the embossed facer (112) relative to the un-embossed facer (110) in the range of 0.0009 inches to 0.0015 inches. Similarly, paragraph [00059] describes the surface area difference of the embossed facers shown in Figs. 4C-4E as compared to a flat surface area of a pre-embossed facer. In both instances, the change in surface area and thickness profile displacement is described throughout the specification in the context of the embossed facer alone, prior to its incorporation into a building sheathing (i.e., prior to lamination with the foam core and imprinting to form the primary drainage pattern).
It is noted that the surface area and the thickness profile displacement of the embossed facer after the first step of micro-embossing would not be equivalent to the respective surface area and thickness profile displacement of the embossed facer after the second step of imprinting. Therefore, the claimed properties of the embossed facer are directed to an intermediate structure of the embossed facer which is no longer present in the final claimed product. For example, once the imprinting step of forming the primary drainage pattern is performed, the surface area and thickness profile displacement of the embossed facer would be significantly increased relative to the ranges recited in claims 2, 3, and 14, likely to values beyond the claimed ranges.
For the purpose of applying prior art, the limitations in claims 2, 3, and 14 will be interpreted in light of the instant specification as product-by-process limitations directed to an intermediate form of the embossed facer which is not present in the final product as claimed. It is noted that the patentability of the product does not depend on its method of production, such that the intermediate form of the embossed facer is only considered to limit the claimed product to the extent that the process would be expected to impart distinctive structural characteristics to the final product. See MPEP 2113(I). In the instant case, the change in surface area and thickness profile displacement of the embossed facer after the first micro-embossing step is not considered to impart any distinctive structural characteristics to the final product, as the final product could have any further increase (or decrease) in surface area and thickness profile displacement as a result of the other processing steps.
Further regarding claims 3 and 14, the limitations reciting “wherein the embossed facer results from embossing of a previously un-embossed facer whereby the embossing of the un-embossed facer results in a thickness profile displacement of the embossed facer relative to the un-embossed face and wherein the thickness profile displacement is in a range of between 0.0009 inches and 0.0034 inches” are also indefinite due to a lack of correspondence with the instant specification.
In looking to paragraph [00050] of the as-filed specification, in reference of Figs. 2A-2C, the embossed facer (112) is said to result from embossing of a previously un-embossed facer (110), where the thickness or profile difference (108) for a particular x and y coordinate location may have a measurement Md, wherein Md is in a range of between 0.0009 inches and 0.0015 inches. The thickness profile difference (108) shown in Fig. 2C appears to correspond to the claimed “thickness profile displacement” of the embossed facer relative to the un-embossed facer, where a range of 0.0009 inches to 0.0015 inches is disclosed for this property.
Paragraph [00052] discloses that a thickness of the sheet or layer of facer material is preferably on the order of between 0.00090 inch and 0.0034 inch, which corresponds to the upper and lower endpoint values of the range recited in claims 3 and 14. However, this range refers to the thickness of the facer, not to the thickness profile displacement of the embossed facer. Based on the above disclosure, the limitations in claims 3 and 14 appear to intend to recite a range of 0.0009 inches to 0.0015 inches, consistent with the values disclosed in paragraph [00050]. However, it is noted that the range of 0.0009 inches to 0.0015 inches for the thickness profile displacement is supported by the original claims, such that it is not clear whether the original claims contained a typographical error. Clarification from the Applicant is respectfully requested.
Regarding claim 8, the limitation reciting “wherein the plural primary drainage channels define islands having essentially a diamond shape” is indefinite because the metes and bounds of the phrase “essentially a diamond shape” are not clear. See MPEP 2173.05(b)(III)(B).
In looking to paragraph [00064], in reference to Fig. 5, the diamond-shaped pattern (120) is said to comprise plural primary drainage channels (122(1), 122(2)), where the primary drainage pattern (66) results in the formation or definition of surface islands (124) between the primary drainage channels (122), with the surface islands themselves having essentially a diamond shape. Paragraph [00072] further discloses that a primary drainage pattern other than the diamond-shaped primary drainage pattern may be imparted to the foam composite. The instant specification, however, does not disclose any specific shapes for the islands other than a diamond shape, as shown in Fig. 5, such that it is not clear what other shapes may be encompassed by the phrase “essentially a diamond shape”. In order to overcome this rejection, it is suggested to amend the above limitation to recite --wherein the plural primary drainage channels define islands having
Regarding claims 9 and 10, the limitations directed to “the plural secondary drainage channels” are indefinite because there is insufficient antecedent basis for this limitation in the claims. Independent claim 1 sets forth a primary drainage pattern comprising plural primary drainage channels, and while dependent claim 4 sets forth secondary drainage channels, claims 9 and 10 do not depend from claim 4. In order to provide proper antecedent basis for these limitations in claims 9 and 10, the claims can be amended to be dependent from claim 4. For the purpose of applying prior art, the limitations directed to the plural secondary drainage channels in claims 9 and 10 are interpreted as not further limiting the current language of the claims.
Regarding claim 11, the limitation reciting “wherein the embossed facer is embossed foil” is indefinite because it is not clear what structure is defined by the claim. In particular, it is noted that paragraph [00046] of the as-filed specification states that the term “facer” is generic and not limited to any particular materials, wherein the terms “facer” and “foil” may be used interchangeably herein, and in such instance reference to a ”foil” should be understood as a reference to a generic facer. Based on this disclosure, the limitation in claim 11 does not appear to define any additional structural limitations on the claimed invention, as an “embossed facer” is considered to be equivalent to an “embossed foil”. Absent further clarification from the Applicant, the limitation of claim 11 is interpreted as being satisfied by the embossed facer set forth in claim 1.
Regarding claim 13, the limitation reciting “wherein the facer material of the non-planar surface features on the first surface of the embossed facer” is indefinite because there is insufficient antecedent basis for the phrases “the facer material” and “the first surface” of the embossed facer in the claims.
Independent claim 12 sets forth that an embossed outer layer comprises non-planar surface features on an outside surface of the embossed facer, such that the “facer material” is interpreted as referring to a material of the embossed outer layer, and the “first surface” is interpreted as referring to the previously-recited “outer surface” of the embossed facer. Absent further clarification from the Applicant, the claim will be interpreted as such for the purpose of applying prior art.
Regarding claim 15, the limitation reciting “wherein the scrim comprises non-woven fibers” is indefinite because there is insufficient antecedent basis for the term “the scrim” in the claims. Independent claim 12 sets forth that the embossed facer comprises a scrim layer comprising scrim elements. It is therefore not clear whether the term “the scrim” in claim 12 is intended to refer to the previously-recited “scrim layer” or to the previously-recited “scrim elements”.
In looking to paragraph [00075] of the as-filed specification, Fig. 3C is said to depict an embossed facer layer adhered to a scrim (98), preferably a non-woven scrim, and Fig. 3E is said to depict a facer that comprises a random direction non-woven scrim in which the scrim fibers are randomly arranged in at least one direction. Based on this disclosure, the limitation in claim 15 appears to intend to require that the scrim layer comprises non-woven fibers. Absent further clarification from the Applicant, the claim will be interpreted as such for the purpose of applying prior art.
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 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,174,503. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claims 1 and 11 of the instant invention, claim 1 of US 10,174,503 recites a laminated building sheathing comprising a rigid foam board (foam core) comprising a drainage pattern (primary drainage pattern) formed on a major surface of the foam board, the drainage pattern comprising a drainage channel (primary drainage channels), and a flexible film facer (embossed facer, embossed foil) configured to cover the major surface of the rigid foam board and to conform to the drainage pattern. The spaces between the drainage channels in the drainage pattern therefore form islands on the first surface of the building sheathing. The facer which is conformed to the shape of the drainage pattern therefore also has non-planar surface features on an outside surface thereof, wherein the drainage pattern extends into both the facer and the foam board.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 7, and 11 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Overman (US 2021/0095469).
Regarding claims 1 and 11, Overman teaches an insulation panel (14; building sheathing) comprising a foam core (20) and a drainage plane (24; embossed facer) attached to the exterior side of the foam core ([0034], Fig. 2). The drainage plane may be referred to as a facer layer and may be formed from a sheet of film or foil having dimples (34; islands) embossed into the sheet, such that recessed flow channels (36; primary drainage channels) are formed between the dimples ([0034]-[0035], [0039]). Therefore, the dimples and flow channels together correspond to the claimed non-planar surface features on an outside surface of the drainage plane. The panels may also be formed by embossing the drainage plane after it is attached to the foam core, such that the dimples and flow channels are formed simultaneously in both the drainage plane and the foam core [0057].
Regarding claims 2 and 3, Overman teaches all of the limitations of claim 1 above. As explained in the indefiniteness rejections above, the limitations in claims 2 and 3 directed to an increased surface area and a thickness profile displacement of the embossed facer relative to an un-embossed facer is interpreted as a product-by-process limitation which does not impart any distinctive structural characteristics to the final building sheathing product as claimed. See MPEP 2113(I). The insulation panel taught by Overman is therefore considered to anticipate the claimed invention.
Regarding claim 7, Overman teaches all of the limitations of claim 1 above and further teaches that the insulation panel comprises a cellulosic layer (22; second facer) adhered to a surface of the foam core (20) on the opposite side from the drainage plane ([0028], Fig. 2).
Claims 1-7 and 11-15, are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Maclure et al. (US 2017/0225438).
Regarding claims 1, 4-7, 11, 12, and 15, Maclure et al. teaches a composite material (building sheathing) formed by combining a polyurethane material with an unclickable foam layer and a scrim layer, wherein the composite material is embossed to form pillow-like chambers or cells delineated by a network of emboss pattern lines (Abstract).
The composite material is formed of a PU leather (10) which comprises a PU face material (20; embossed facer), a foam material (22; foam core), and a scrim material (24; second facer) ([0039], Figs. 1A-1B). The PU face material (20) comprises a PU surface layer (60; embossed outer layer), a PU skin layer (62), a PU binder layer (64), and a backing layer (66; scrim layer) ([0041], Fig. 3).
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Maclure et al. teaches that a grain pattern (non-planar surface features, secondary drainage channels) is formed on the surface of the PU face material (20) in order to improve its haptic qualities and to simulate the appearance of leather ([0005], [0040], [0044]). Maclure et al. teaches that the material for the backing layer (66; scrim layer) can enhance the haptic features of the PU face material, wherein the backing can be a circular knit, tricot suede, or nonwoven material ([0045]), such that the scrim elements are at least partially randomly oriented and are capable of contributing to formation of the grain pattern on the surface of the PU face material.
The PU leather is also embossed with a pattern that is decorative and three-dimensional in appearance, wherein the pattern is defined by a network of markings or lines (12; primary drainage channels) and pillow-like cells (14; islands) that are formed during the embossing process ([0037], Figs. 1A-1B). As shown in Fig. 1B above, the lines (12) extend into both the PU face material (20) and the foam material (22).
It is noted that the preamble limitation reciting “A building sheathing” is interpreted as statement of an intended use of the claimed product, where the body of the claim fully sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention rather than any distinct limitations on the claimed invention. See MPEP 2111.02(II). The composite material taught by Maclure et al. is capable of being used as a building sheathing as recited in the preamble of the claim, thus satisfying the claimed preamble limitation.
Regarding claims 2, 3, and 14, Maclure et al. teaches all of the limitations of claims 1 and 12 above. As explained in the indefiniteness rejections above, the limitations in claims 2, 3, and 14 directed to an increased surface area and a thickness profile displacement of the embossed facer relative to an un-embossed facer is interpreted as a product-by-process limitation which does not impart any distinctive structural characteristics to the final building sheathing product as claimed. See MPEP 2113(I). The composite material taught by Maclure et al. is therefore considered to anticipate the claimed invention.
Regarding claim 13, Maclure et al. teaches all of the limitations of claim 12 above. It is noted that the limitation requiring that the facer material is “configured to contribute to the formation of the secondary drainage channels” is interpreted as functional language related to an intended use of the facer material which is considered to be satisfied when the facer material is capable of performing in the manner claimed. As noted above, Maclure et al. teaches that a grain pattern (non-planar surface features, secondary drainage channels) is formed on the surface of the PU face material (20), for example by transferring the grain pattern to the PU face material during formation thereof, in order to improve its haptic qualities and to simulate the appearance of leather ([0005], [0040], [0044]). The PU face material is therefore capable of performing in the manner claimed, thus satisfying the claimed functional limitation.
Claims 1-3, 7, 8, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Grant et al. (US 2018/0223530).
Regarding claims 1, 8, 10, and 11, Grant et al. teaches a laminated building sheathing (20) comprising a rigid foam board (22; foam core) and a facer (24; embossed facer) adhered to the foam board ([0064], [0067], Figs. 1-4). As shown in Fig. 3, reproduced below, the major surface (first surface) of the rigid foam board, which is overlaid by facer (24), has a drainage pattern (30; primary drainage pattern) comprising plural drainage channels (32; primary drainage channels) formed thereon [0068].
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The drainage pattern has an overall criss-cross configuration to form plural diamond-shaped plateaus (34; islands) on the major surface of the rigid foam board, where the channels (32) surrounding each plateau are formed at about 1/8” depth ([0069], Fig. 1). Grant et al. teaches that the facer (24) conforms to the drainage pattern ([0070]), such that the pattern extends into both the facer and the foam board, wherein the portions of the facer pressed into the channels correspond to the claimed non-planar surface features.
Regarding claims 2 and 3, Grant et al. teaches all of the limitations of claim 1 above. As explained in the indefiniteness rejections above, the limitations in claims 2 and 3 directed to an increased surface area and a thickness profile displacement of the embossed facer relative to an un-embossed facer is interpreted as a product-by-process limitation which does not impart any distinctive structural characteristics to the final building sheathing product as claimed. See MPEP 2113(I). The building sheathing taught by Grant et al. is therefore considered to anticipate the claimed invention.
Regarding claim 7, Grant et al. teaches all of the limitations of claim 1 above and further teaches that either one or both faces of the rigid foam board may have facer applied or adhered thereto ([0067]), wherein an embodiment in which a facer is adhered to both sides of the rigid foam board comprises a second facer as claimed.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Overman (US 2021/0095469) as applied to claim 1 above.
Regarding claim 8, Overman teaches all of the limitations of claim 1 above but only expressly teaches the dimples (36; islands) having a rounded or hexagonal shape ([0040], [0061], Figs. 4, 5A) and therefore does not expressly teach that the dimples (36; islands) have a diamond shape.
Overman does, however, further teach that additional shapes and configurations may be used, wherein the drainage planes may have differently sized dimples, differently spaced dimples, as well as different shapes of dimples [0061]. It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the dimples in any shape, such as in a diamond shape, depending upon the desired aesthetic effect, given that Overman teaches that the shape of the dimples is not critical. It is well settled that changes in shape are held to be obvious to one of ordinary skill in the art absent persuasive evidence that the particular shape is significant. See MPEP 2144.04(IV)(B).
Regarding claims 9 and 10, Overman teaches all of the limitations of claim 1 above. Although Overman teaches that the foam core (20) may range in thickness from 0.50 inches to 4.0 inches ([0053]), Overmans is silent to a depth of the recessed flow channels (36; primary drainage channels), and thus is also silent to a depth of the recessed flow channels relative to the thickness of the insulation panel (14; building sheathing).
Overman does, however, further teach that the flow channels (36) assist in removing any water or moisture from the panels (14) ([0038]), such that it would have been obvious to one of ordinary skill in the art to set the depth of the channels within an appropriate range, such as within the range of 1/16” to 1/4”, resulting in a relative depth of the channels to the thickness of the insulation panel within the range of 1.5% to 25%, to ensure that the channels have dimensions suitable for assisting in removing moisture from the panels. Moreover, it is well settled that where the only difference between the prior art and the claims is a recitation of the relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art, the claimed device is not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A).
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Maclure et al. (US 2017/0225438) as applied to claim 1 above.
Regarding claim 8, Maclure et al. teaches all of the limitations of claim 1 above but does not expressly teach that the lines (12; primary drainage channels) define cells (14; islands) having a diamond shape.
Maclure et al. does, however, further teach that the emboss patterns can be symmetrical or asymmetrical, and the shapes of the cells (14) can be geometric or random ([0038], Fig. 1A). Maclure et al. teaches that a wide variety of pattern designs can be used to form the PU leather material provided that the emboss pattern is suitable for maintaining the bonding between the composite materials [0038].
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention obvious to form the cells in any shape, such as in a diamond shape, depending upon the desired aesthetic effect, given that Maclure et al. teaches that the shape of the cells is not critical. It is well settled that changes in shape are held to be obvious to one of ordinary skill in the art absent persuasive evidence that the particular shape is significant. See MPEP 2144.04(IV)(B).
Regarding claims 9 and 10, Maclure et al. teaches all of the limitations of claim 1 above but is silent to a depth of the lines (12; primary drainage channels) and to a depth of the lines relative to the thickness of the composite material.
Maclure et al. does, however, further teach that conventional embossed synthetic leather typically lacks sufficient depth to achieve a noticeable, realistic, and/or aesthetically pleasing result [0007]. Maclure et al. teaches that the lines are formed by embossing rollers which can create a variety of emboss designs depending on the patterns which are engraved into the surface of the roller [0057].
It would, therefore, have been obvious to one of ordinary skill in the art to set the depth of the lines within an appropriate range, such as within the range of 1/16” to 1/4” such that a depth of the lines relative to the thickness of the composite material falls within the range of 1.5% to 25%, depending upon the desired aesthetic and/or haptic properties for the composite material. Moreover, it is well settled that where the only difference between the prior art and the claims is a recitation of the relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art, the claimed device is not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Grant et al. (US 2018/0223530) as applied to claim 1 above.
Regarding claim 9, Grant et al. teaches all of the limitations of claim 1 above. Although Grant et al. teaches that the channels (32) are formed at about 1/8” depth ([0069]), the reference does not expressly teach a thickness of the building sheathing and thus does not teach a depth of the channels relative to the thickness of the building sheathing.
Grant et al. does, however, further teach that if the drainage channels are too deep or too wide, the facer cannot bond into the channels at all, such that the dimensions of the drainage channels must be selected to accommodate a desired surface area contact of the facer [0089]. The thickness of the facer may also be controlled in conjunction with controlling to the size of the drainage channel in order to enhance bonding of the facer to the drainage channel [0090].
It would, therefore, have been obvious to one of ordinary skill in the art to set a relationship between the depth of the channels and the thickness of the building sheathing within the claimed range in order to ensure that an adequate bond can be formed between the facer and the channel surface. Moreover, it is well settled that where the only difference between the prior art and the claims is a recitation of the relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art, the claimed device is not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sealock et al. (US 2020/0256053) teaches a panelized roof sheathing construction system (10) comprising a plurality of panels (20) each having a water resistant barrier layer (30) adhesively secured to at least one of the surfaces (22, 24) of the panels ([0052], Figs. 1-4). The barrier layer preferably has a non-skid textured surface (35) characterized by an embossed pattern of features or indentations, wherein the embossed textured surface may be comprised of a plurality of primary textured features (33) and a plurality of secondary textured features (34) ([0067]-[0070], Figs. 4-4A).
Savoy et al. (WO 2024/206406) teaches an insulation sheathing (1) comprising an insulation foam (2) and an insulation facer (3) laminated on at least one surface thereof, wherein the insulation facer comprises an embossed pattern (5) on its surface which aids in draining of the accumulating moisture on the surface of the insulation sheathing (p. 21-22; Figs. 1-2).
Chen et al. (US 2026/0055607) teaches a composite building panel (300a, 300b) comprising a core composite panel structure (302) and a drainage layer (304a, 304b) adhered thereto ([0061]-[0064], Figs. 3A-3B).
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/Rebecca L Grusby/Examiner, Art Unit 1785
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