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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 11-12 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claims 11-12, the claims stipulate on characteristics of the sheet within the system of claim 10; however, the sheet within the system of claim 10 is the sheet of claim 1, which already requires the thickness and bentonite distribution characteristics described in claims 11-12.
Regarding claim 19, the claim stipulates on the thickness of the sheet within the method of claim 17, however the sheet within the method of claim 17 is the sheet of claim 1, which already requires said thickness.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zhou (US 2015/0197884 A1) in view of Harriett (US Patent No.4,787,780).
Regarding claims 1 and 10-20, Zhou teaches asphaltic sheet within a composition of sheet materials used as roofing underlayment ([0002]), which is intended for use as a self-sealing sheet which may accommodate nails ([0105]), which reads on the claimed “sheet of nail sealable material,” comprising:
A polymeric modifier ([0052]) which may include SBS block copolymers ([0057]), which reads on the claimed “matrix material”
Zhou teaches that the sheet materials are useful as an underlayment for a roof deck ([0092]), which reads on the claimed “roof deck.” Further, Zhou explains that the sheets are disposed onto roofs and/or vertical surfaces ([0003]), which reads on the claimed “wherein the roof deck has at least one surface” and wherein the sheet of the nail sealable material is “disposed on at least one surface.” Zhou teaches that the sheet is self-sealing, and can form a water tight seal around nail holes ([105]), and additionally shows examples wherein the sheet is affixed to a piece of plywood using staples (thus mimicking the intended use of nailing the sheet to a roof). The sheet of Zhou therefore reads on the claimed “plurality of nails,” wherein the sheet of the nail sealable material is affixed to the at least one surface of the roof deck by a plurality of nails, wherein the plurality of nails extends through the sheet of the nail sealable material.
Zhou teaches that the asphaltic sheet (Figure 3) thickness may range from 10 to 120 mils ([0021]), which corresponds to a thickness range of between 0.01 and 0.120 inches. The thickness range of Zhou thereby encompasses the claimed range of “0.04 inches to 0.1 inches,” establishing a prima facie case of obviousness.
Zhou further teaches that the composition is moisture resistant so as to meet the requirements of ASTM D1970 ([0104]).
Zhou differs from claim 1 because it is silent as to the incorporation of bentonite, wherein the bentonite is embedded within the matrix material. However, Zhou does teach the incorporation of fillers ([0019]).
In the same field of endeavor, Harriett teaches a method of waterproofing an area (col. 3, lines 41-43) which may include a roof (col. 3, lines 23-25), comprising a mixture of sodium bentonite (col. 6, lines 34-38) and butyl rubber (col. 4, line 17). Harriett teaches that the bentonite is intimately mixed into the inventive matrix (col. 3, lines 44-48), which reads on the claimed “embedded,” and teaches that the waterproofing composition swells in response to water to form a liquid-impermeable layer (col. 4, lines 64-68), and that the bentonite component is responsible for the swelling characteristic of the composition (col. 5, lines 5-6).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the sodium bentonite of Harriett to the formulation of Zhou for the purpose of incorporating a water-swellable product that provides a waterproofing characteristic to the asphaltic sheet.
Harriett teaches that the bentonite is incorporated in amounts ranging from 35% to about 90% (col. 5, lines 34-36), which overlaps the claimed range of “30 wt% to 75 wt%,” establishing a prima facie case of obviousness.
Zhou is silent with regard to the limitation wherein none of the bentonite is present as a layer on the surface of the asphaltic sheet. However, said limitation is a characteristic of the claimed composition which will arise from the combination of (i) the components within the claimed composition and (ii) the method of manufacture which produces said composition.
As described above, Zhou as modified teaches a composition which is structurally identical to the claimed composition, containing all of the claimed components in all of the claimed amounts. Furthermore, Zhou teaches that the inventive sheet is formed through a mixing process followed by subsequent pressing of the mixed composition to form a flat membrane/sheet ([0108]). Likewise, the instant Specification contemplates that the purportedly inventive composition is optionally produced via a mixing process, followed by pressing ([88]). The Specification is silent regarding any specific processing treatments which give rise to the claimed absence of bentonite on the surface of the composition, and therefore the simple mixing and flattening process must be sufficient to produce the claimed effect.
Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, and/or are produced by an identical or substantially identical process, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed distribution of bentonite will therefore necessarily be present in the composition of Zhou as modified, as applied above.
If it is the Applicant’s position that the process of Zhou as modified is insufficient to produce the claimed distribution of bentonite, it will be the Office’s position that the instant disclosure lacks enablement for the claimed distribution since the instant Specification is no more specific than mere mixing of the ingredients to produce the desired effect. The instant Specification merely teaches that the bentonite is embedded in the matrix material and may not be present on the surface thereof ([52]), and states that the process of embedding may comprise mixing and pressing of the composition ([88]).
Regarding claim 2, Harriett teaches that the bentonite is sodium bentonite (col. 6, lines 34-38), which reads on the claimed list.
Regarding claim 3, Zhou teaches that the SBS rubber is included at between 20 and 40 parts by weight with respect to the asphaltic component ([0071]). Further, Harriett teaches the incorporation of bentonite in amounts ranging from 35% to about 90% (col. 5, lines 34-36). These components together therefore comprise between 55 and 100 weight percent of the composition, which overlaps the claimed range of “25 wt % to 70 wt%,” establishing a prima facie case of obviousness.
Regarding claim 5, Zhou teaches that the asphaltic layer may include various fillers ([0019]), which are incorporated within and therefore embedded in the matrix material.
Regarding claim 6, Zhou teaches that the filler may include limestone ([0069]), which reads on the claimed list.
Regarding claims 7-9, Zhou teaches that the SBS rubber is included at between 20 and 40 parts by weight with respect to the asphaltic component ([0071]). The SBS rubber therefore may comprise between 20 and 40 weight percent of the asphaltic component, which overlaps the claimed ranges of “5 wt % to 95 wt%,” “25 wt % to 75 wt%,” and “25 wt % to 50wt%,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed March 3, 2026, with respect to Double Patenting have been fully considered and are persuasive. The Double Patenting Rejection of claims 1-3 and 5-9 has been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that Zhou and Harriett fail to teach the newly added limitation requiring that the bentonite not be present on the surface of the composition. However, as described above, Zhou as modified by Harriett meets all of the claimed compositional limitations and is produced by a substantially identical process as contemplated by the instant Specification. The claimed distribution of bentonite will therefore necessarily be present in Zhou as modified by Harriett.
Applicant next argues that the Examiner has failed to describe how the claimed ASTM D1970 characteristic is present in the combined composition. However, as stated above and previously, Zhou teaches the incorporation of fillers and teaches a passing ASTM D1970 characteristic. The Zhou therefore contemplates that embodiments of the inventive composition, which contain fillers, have the claimed ASTM D1970 characteristic. Assuming arguendo that this is not the case, however, the composition of Zhou as modified by Harriett meets all of the claimed compositional limitations. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed ASTM D1970 characteristic will therefore necessarily be present in Zhou as modified by Harriett, as described above.
Applicant finally argues that newly added claims 10-20 are not present in the prior art because they depend on claim 1. However, as described above, Zhou as modified by Harriett reads on claim 1. Zhou as modified by Harriett additionally reads on newly added claims 10-20, as described in the 35 USC 103 rejection, above.
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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