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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 2, 2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 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.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-15 of copending Application No. 17/056,619 (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 1-10 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 § 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 1-10 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 claim 1, the wording of “the intermediate separation layer is configured to ensure an adequate shock absorption effect for impacts” in the last paragraph is unclear. The term “adequate” is a relative term which renders the claim indefinite. The term “adequate” 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. For purposes of examination, the examiner interprets “the intermediate separation layer is configured to ensure an adequate shock absorption effect for impacts” to mean “the intermediate separation layer is configured to absorb shock from impacts”. Claims 2-10 are rejected for depending from a rejected claim.
Claim 7 recites the limitation “the at least one geomat of entangled plastics threads” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. Examiner notes that at least one geomat of entangled filaments of plastic material is previously recited, but not at least one geomat of entangled plastics threads.
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.
Claims 1, 7, 9 and 10 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Terram (Terram Frost Blanket Datasheet) in view of Her (KR 10-0972942).
Regarding claim 1, Terram discloses a geocomposite for the consolidation and/or drainage of ground (e.g. product description on page 1), the geocomposite comprising: a plurality of layers (e.g. figure on page 2, Note 1 on page 1) comprising: at least a first web of a geotextile material, the first web having oppositely facing first and second sides (e.g. TERRAM Geotextile, top layer of figure on page 2); at least a second web of a geotextile material, the second web having oppositely facing first and second sides, the first sides of the first web and the second web facing one another (e.g. hydrophobically enhanced TERRAM Geotextile, bottom layer of figure on page 2); and an intermediate separation layer having respective oppositely facing sides (e.g. TERRAM drainage net, figure on page 2), the first sides of the first web and the second web each being thermofixed to and in contact with the respective oppositely facing sides of the intermediate separation layer (e.g. figure on page 2, Note 1 on page 1), the intermediate separation layer comprising at least one structure of plastic material having a thickness of at least approximately 4 mm (e.g. Physical Properties on page 1 and Note 1 on page 1), the first web, the second web and the intermediate separation layer forming the geocomposite (e.g. figure on page 2, Note 1 on page 1), at least one of the first web and the second web comprising a water-repellent non-woven textile (e.g. bottom filter/separator described in Construction on page 1), the at least one first web or second web comprising the water-repellent non-woven textile having a dimension of pores sufficiently small to repel moisture which would tend to penetrate the web via capillarity (e.g. product description on page 1, wherein the pores must be small enough to repel moisture otherwise the hydrophobically enhanced geotextile would not function hydrophobically as required). Terram does not disclose that the intermediate separation layer comprises a geomat of entangled filaments. Her teaches a geocomposite for the consolidation and/or drainage of ground (e.g. 1, Fig. 1, claim 1), the geocomposite comprising: a plurality of layers (e.g. 1a, 1b and 1c, Fig. 1) comprising: at least a first web of a material, the first web having oppositely facing first and second sides (e.g. 1b, Fig. 1); at least a second web of a material, the second web having oppositely facing first and second sides, the first sides of the first web and the second web facing one another (e.g. 1c, Fig. 1); and an intermediate separation layer having respective oppositely facing sides (e.g. 1a, Fig. 1), the first sides of the first web and the second web each being fixed to and in contact with the respective oppositely facing sides of the intermediate separation layer (e.g. Fig. 1, paragraph 0015), the intermediate separation layer comprising at least one geomat of entangled filaments of material (e.g. Fig. 1, paragraph 0015), the first web, the second web and the intermediate separation layer forming the geocomposite (e.g. Fig. 1, claim 1), at least one of the first web and the second web comprising a non-woven textile (e.g. 1b and 1c, paragraph 0015); wherein the entangled filaments of material produce a structure having irregular voids therein (e.g. Fig. 1, paragraph 0015), and the intermediate separation layer is configured to ensure an adequate shock absorption effect for impacts and to prevent any contact between the first web and the second web following a localized pressure or crushing of the geocomposite (e.g. Fig. 1 wherein the structure of the intermediate separation layer including the entangled filaments and the hills/valleys will absorb shock and prevent contact between the first and second webs). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to form the intermediate separation layer of Terram as a geomat of entangled filaments as taught by Her because such is a known intermediate separation layer in the art that would provide the expected benefit of acting as a drain (e.g. paragraph 0020) and providing elasticity and flexibility to simplify transportation and installation (e.g. paragraph 0022).
Regarding claim 7, the combination of Terram and Her further discloses a method for preparing the geocomposite according to claim 1, the method comprising: forming the at least one geomat of entangled plastics threads by hot extrusion (e.g. Her, paragraph 0019); and subsequently thermowelding the opposite sides of the at least one geomat to the respective first sides of the first and second webs by localized heating (e.g. Terram, Note 1 on page 1).
Regarding claim 9, the combination of Terram and Her further discloses that the geocomposite is configured such that moisture penetrating the first and/or second webs and reaching the intermediate separation layer is drained from the geocomposite (e.g. Terram, drainage net, figure on page 2, Hydraulic Properties on page 1, and Her, paragraph 0020).
Regarding claim 10, the combination of Terram and Her further discloses that the at least one geomat of the intermediate separation layer comprises a permeable structure (e.g. Her, Fig. 1, paragraph 0021 wherein water is capable of passing through the geomat).
Claims 2-6 and 8 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Terram (Terram Frost Blanket Datasheet) in view of Her (KR 10-0972942) as applied to claims 1 and 7 above, and further in view of Thomas (WO 2013/045907).
Regarding claim 2, the combination of Terram and Her discloses the invention substantially as applied above but does not disclose at least one additional layer. Thomas teaches a geocomposite for the consolidation and/or drainage of ground (e.g. 60, Fig. 5), the geocomposite comprising: a plurality of layers comprising: at least a first web of a geotextile material, the first web having oppositely facing first and second sides (e.g. 54, Fig. 5, page 18, lines 22-24); at least a second web of a geotextile material, the second web having oppositely facing first and second sides, the first sides of the first web and the second web facing one another (e.g. 52, Fig. 5, page 18, lines 22-24); and an intermediate separation layer having respective oppositely facing sides (e.g. 50, Fig. 5), the first sides of the first web and the second web each being thermofixed to and in contact with the respective oppositely facing sides of the intermediate separation layer (e.g. Fig. 5), the first web, the second web and the intermediate separation layer forming the geocomposite (e.g. Fig. 5). Thomas further teaches adding at least one additional layer thermofixed to the second side of at least one of the first web or the second web, the at least one additional layer comprising a geosynthetic, the geosynthetic comprising one or more of: a geogrid; a geonet; a geomat; a geotextile; a geomembrane or a combination thereof (e.g. 64 and 66, Fig. 8, page 19, lines 10-12). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to add an additional intermediate separation layer and a third web as taught by Thomas for the geocomposite of Terram and Her because it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art and the additional layers would provide the expected benefit of assisting with passing liquid laterally through the geocomposite (e.g. Thomas, page 19, lines 12-14).
Regarding claim 3, the combination of Terram, Her and Thomas further discloses that the at least one additional layer comprises a geogrid and/or a geomat thermofixed to the second side of the at least one of the first web or the second web (e.g. Her, identical to geomat 1a, Fig. 1, paragraph 0015 and/or Thomas, page 19, lines 10-12).
Regarding claim 4, the combination of Terram, Her and Thomas further discloses that the at least one additional layer comprises at least one geomat reinforced by a geogrid and the at least one geomat includes plastics filaments entangled with the geogrid, the at least one geomat of the at least one additional layer being thermofixed to the second side of the at least one of the first web or the second web (e.g. Her, identical to geomat 1a, Fig. 1, paragraph 0015 and Terram, identical to TERRAM Geotextile, top layer of figure on page 2).
Regarding claim 5, the combination of Terram, Her and Thomas further discloses that the at least one additional layer has a first side facing the second side of the at least one of the first web or the second web and a second side facing away from the first side of the at least one additional layer (e.g. Her, identical to geomat 1a, Fig. 1), the at least one additional layer comprising at least one geomat thermofixed to the second side of the at least one of the first web or the second web (e.g. Her, identical to geomat 1a, Fig. 1), the plurality of layers further comprising an external web thermofixed to the at least one geomat of the at least one additional layer at the second side thereof (e.g. Terram, identical to TERRAM Geotextile, top layer of figure on page 2).
Regarding claim 6, the combination of Terram, Her and Thomas further discloses that the external web comprises a geomembrane (e.g. Terram, identical to TERRAM Geotextile, top layer of figure on page 2).
Regarding claim 8, the combination of Terram and Her discloses the invention substantially as applied above but does not disclose fixing to the second side of at least one of the first web and/or the second web of the geocomposite one or more layers of a geosynthetic comprising one or more of: geogrids; geonets; geomats; geotextiles; geomembranes; or a combination thereof. Thomas teaches a geocomposite comprising a plurality of layers comprising: at least a first web of a geotextile material, the first web having oppositely facing first and second sides (e.g. 54, Fig. 5, page 18, lines 22-24); at least a second web of a geotextile material, the second web having oppositely facing first and second sides, the first sides of the first web and the second web facing one another (e.g. 52, Fig. 5, page 18, lines 22-24); and an intermediate separation layer having respective oppositely facing sides (e.g. 50, Fig. 5), the first sides of the first web and the second web each being thermofixed to and in contact with the respective oppositely facing sides of the intermediate separation layer (e.g. Fig. 5), the first web, the second web and the intermediate separation layer forming the geocomposite (e.g. Fig. 5). Thomas further teaches fixing to the second side of at least one of the first web and/or the second web of the geocomposite one or more layers of a geosynthetic comprising one or more of: geogrids; geonets; geomats; geotextiles; geomembranes; or a combination thereof (e.g. 64 and 66, Fig. 8, page 19, lines 10-12). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to add one or more layers of a geosynthetic as taught by Thomas to the second side of at least one of the first web and/or the second web of the geocomposite of Terram and Her because it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art and the additional layers would provide the expected benefit of assisting with passing liquid laterally through the geocomposite (e.g. Thomas, page 19, lines 12-14). Examiner notes that the step of supplying the geocomposite to a thermowelding station must be included to provide the thermal lamination disclosed by Terram (e.g. Note 1 on page 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STACY N LAWSON whose telephone number is (571)270-7515. The examiner can normally be reached Mon-Fri 9am-3pm.
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/S.N.L./Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678