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 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 1-6 and 9-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 17/056,637 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application includes all of the limitations of claims 1-8 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1-6 and 9-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Frost Blanket Data Sheet” to Terram in view of USPN. 5,891,549 to Beretta and EP-1160367 to Siniscalco.
Regarding Claim 1-6, 9-15
Terram teaches a geo-composite for drainage composed of a plurality of layers comprising at least a first web of geotextile, a second web of geotextile and an intermediate separation layer in between (Terram, product description, construction). Terram teaches that at least one web is a water-repellent non-woven textile (Id., fig. 2). Terram teaches that the layers extend to and terminate at an outer peripheral part of the geo-composite which necessarily form terminal edge portions forming part of an outer terminal peripheral portion of the geo-composite (Id.). Terram teaches that the layers are thermally bonded together (Id.).
Terram does not specifically teach an additional layer. However, Barretta teaches a geotextile/geomembrane material comprising a geogrid reinforcing at least one web/geomat which are subsequently glued together necessarily entangling the geogrid and the filaments of the geomat (Barretta, abstract, column 3, lines 34-36). Barretta teaches that the composite geotextile provides improved strength, flexibility, lower weight and provides improved grip to the surfaces to which the combination is applied (Id., column 2, lines 4-10, column 4, line 30-45). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the geo-composite of Terram, and to include as the additional outer layer, the geogrid/geomat sheet-like structure of Berretta, and to extend said layer to terminate at an outer peripheral part of the geo-composite, motivated by the desire to form a conventional geo-composite having improved strength, flexibility, lower weight and provides improved grip to the surfaces to which the combination is applied.
Terram does not specifically teach that the intermediate layer is a geomat. However, Siniscalco teaches a matting of interlaced and entangled plastic filaments bonded together and containing voids, suitable for use in drainage applications (Siniscalco, abstract, paragraph [0001]). Siniscalco teaches that the geomat provides drainage properties at a low-cost (Id., paragraph [0014]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the composite of Terram and to include as the intermediate layer, the geomat of Siniscalco, motivated by the desire to form a conventional drainage geo-composite having improved cost.
Terram teaches that the composite comprises a thickness of approximately 5.5 mm but does not specifically teach that the intermediate layer comprises a thickness of 4mm or greater. However, it should be noted that the thickness of the intermediate layer is a result effective variable. As thickness increases, the material exhibits increased weight, cost and stiffness. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the thickness since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the thickness in order to achieve the desired weight, cost and stiffness of the composite.
Response to Arguments
Applicant's arguments filed September 19, 2025 have been fully considered but they are not persuasive. Applicant argues that the improved strength, flexibility, lower weight and improved grip to applied surfaces of Beretta would not be Applicable to Terram’s composite because adding a layer would necessarily increase weight and decrease flexibility. Examiner respectfully disagrees. While an additional layer would necessarily increase weight in some manner and potentially decrease flexibility of a composite, in context to the invention of Beretta these properties are relative to that of a comparable layer. When the layers of Beretta are added to a composite the strength and grip of the fabric composite are improved and for the given improvements the flexibility and weight are not adversely effected to the degree that a comparable addition would typically require.
Applicant argues that Terram does not provide motivation to thermofix any further structure to the geocomposite. Examiner respectfully disagrees. Terram teaches that the entirety of the composite is formed via thermal bonding (Terram, see note 1, page 1) when the additional layers of Beretta are combined with the geocomposite of Terram, it would follow that the entirety of the composite would still be formed via the thermal lamination technique.
Applicant argues that it is unclear as to why one of ordinary skill in the art would be motivated to modify the intermediate layer of Terram with the matting of Siniscalco since Siniscalco primarily addresses processing improvements. Examiner respectfully disagrees. Siniscalco teaches flexible panels for use in soil drainage, reinforcement and protection against erosion which can be formed at a low cost and high performance (Siniscalco, paragraphs [0001]-[00014]).
Applicant further argues that the net of Terram is presumably flat while the matting of Siniscalco contains protuberances which provide capture of solid materials. Examiner respectfully disagrees. Terram teaches specifically that the net structure is three dimensional (Terram, see note 1, page 1). The two structures are used for the same purposes and are three dimensional polymer sheets.
Applicant further argues that the net of Terram is polyethylene and the processing temperatures of the matting of Siniscalco is too high relative to the melting point of polyethylene. Examiner respectfully disagrees. There is no requirement that the matting material of Siniscalco must be polyethylene in order to be combined with the composite of Terram. Furthermore, extrusion temperatures are typically higher than melting temperatures and one of ordinary skill in the art would expect that processing polyethylene would still be appropriate at the example temperatures of Siniscalco.
Applicant argues that it would not have been obvious to optimize the thickness of the intermediate layer due to the deficiencies of Terram relative to claim 1. Examiner respectfully disagrees. As set forth above, the combination of references teach the limitations of the claims.
Conclusion
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 VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786